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Motivating example:

Claim 1. An A, comprising:
    a B; and 
    a C.

    Claim 2. The B of Claim 1, comprising a D. (narrowing)
    Claim 3. The B of Claim 1, comprising an E. (alternative)

    Claim 4. The C of Claim 1, comprising an E. <-- HERE (an, another, said?)

Update: While trying to keep the question short, I omitted a key phrase which I mistakenly tried to keep implicit (due to the indentation), but needs repeating. Let me try the above again:

Claim 1. An A, comprising:
    a B; and 
    a C.

    Claim 2. The A of Claim 1, wherein B comprises a D. (narrowing)
    Claim 3. The A of Claim 1, wherein B comprises an E. (alternative)

    Claim 4. The A of Claim 1, wherein C comprises an E. <-- HERE (an, another, said?)

Update: Here is a visual representation of the above. The shapes help show that such devices are distinct types of "things", except for the Es which may be two instances of the same type of thing, or just one instance.

visual description

Question:

Leaving the claims in the order and number above without grouping (no Markush), what is the article for Claim 4? Is it still "an" because it refers to a new E? "Another" feels wrong because the E of Claim 3 is an alternative. Both E's have the same intrinsic function, so differentiating by function will not help.

Is there a clever phrase or technique to clarify this situation?

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3
  • Why is claim 2 “the b of claim 1 . . . instead of just “a B . . .”. Also you most likely do not want to use consisting. Are you trying to patent the sidelight separately Fromex the whole sign light?
    – George White ♦
    Commented Oct 6, 2022 at 5:54
  • I'm narrowing the definition of the B of Claim 1 as a backup in case the broad definition of Claim 1 is knocked out. Also, yes, typo - I meant "comprising". I'll edit. About your second question, I was told to add as many features and alternatives for a broad claim as I can so there are more landmines for a competitor to step on (and a higher chance of not infringing on prior art).
    – Drakes
    Commented Oct 6, 2022 at 6:29
  • I've update the wording of the claims to not implicitly rely on indentation to refer back to the dependent claim.
    – Drakes
    Commented Oct 6, 2022 at 16:18

1 Answer 1

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You need use a dependent claim to narrow. “2. The device of claim 1 where the B comprises an XYZ.” That narrows claim 1 by adding specificity to one part of it.

As you wrote it (in the original version of the question) claim 2 does not narrow claim 1, rather it is an oddly written independent claim to the B thing.

Also you use the word infringing in your comment - patents do not infringe, products infringe. You might mean that adding details gives you a fallback if a broader claim is later found unpatentable over prior art.

Your comments and edits clarify that you intend these to be dependent claims.

In 4 you would use “an E”. Tracing backwards to the independent claim, there is no other E so it can’t be “the E”.

One way to understand a dependent claim is to re-write it as an independent claim. Use the text of all of the claims in the dependent claim.

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5
  • I've update the wording of claims. While not my focus in this question, I appreciate you reminding me that I cannot implicitly rely on indentation to refer back to the dependent claim. Would we be able to look at the crux of the question?
    – Drakes
    Commented Oct 6, 2022 at 16:16
  • Are B and C the same kind of thing? Could it be claimed as two BCs rather than a B and C? If so 4 is redundant.
    – George White ♦
    Commented Oct 6, 2022 at 17:46
  • No, B and C are not the same kind of thing, they have different functions, purposes, and locations, but both can comprise/incorporate an E (imagine E is an I/O module, for example). I've added a figure to hopefully clarify the question where I am failing to do so in words.
    – Drakes
    Commented Oct 6, 2022 at 20:12
  • The initial problem was not indenting.
    – George White ♦
    Commented Oct 6, 2022 at 23:04
  • Perfect. That's what I needed to know. I'll strive to be more strict with my language. Thanks, again.
    – Drakes
    Commented Oct 7, 2022 at 0:32

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