Questions tagged [claim-construction]

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Is it okay to modify existing patent and file it?

Sorry for the dumb questions but as an engineer I am trying to file a patent myself. I was advised to copy the existing patent that is very similar to mine and start by modifying it for my own idea. ...
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Can I answer a 112 rejection of a method claim by making it less specific?

A patent with the composition claims has already issued (11,090,320), and this is a divisional. My main method claim as filed has the steps of (among others)— Original claim -- A method for reducing ...
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How to define a custom term in a patent claim?

How to define a custom term in a patent claim? I want to define a custom term in my claim and the term will be used in later parts of the claim. For example, A method of an electronic device, ...
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Why inventor will use "consisting" instead of "comprising" transitional phrase in a patent claim?

Why inventor will use "consisting" instead of "comprising" transitional phrase in a patent claim? If a transitional phrase, "comprising" covers broader scopes than a ...
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Is the language '[a] method as claimed in any preceding claim" only available if a special fee is paid for combinations, variation or permutations?

I have a somewhat vague recollection that you can pay an extra fee that will entitle you to the variations, combinations and/or permutations of the individual claims; if you add a language like that ...
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Reducing the number of patent claims

I have a patent application with 45 claims, one independent claim. Some of the claims are for explanation. As an example, the first claim includes: determining x from y; and processing x. Some of the ...
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What are the rules for measuring patents obviousness and generalization?

We always try to make our claims scopes as much generic as possible at the same time overtly generalized claims often fall under obviousness. Is there any criteria or specific rules to measure a claim'...
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Who is the inventor in an invention composed of several already existing sub-devices?

Let´s assume that a company has designed and developed several "building blocks", components, elements or devices that when combined and considered in a specific way (and only in that way) ...
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Two alternative element in one independent claim

Can I use two alternative element without broder statement without covers both? (In one independent claim) (In EPO application) In example, X comprising (A or B) and C (it is an independent apparatus ...
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Importance of configuration descriptions in a claim

I am looking into a new project for which there are a few similar technologies described in patents, but nothing that includes every novel feature I have in mind. However, one of them is written in an ...
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Broadening an independent claim using depending claims

I have an independent claim like this. 1. An X comprising: ... wherein the animal is at least one of: a cat, a dog, a lion not found in a brazilian zoo, and ...
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Antecedent basis in "at least one of" claim

I'm working on a claim. I have limitation that looks something like this. wherein the animal is at least one of: a cat; a dog; a lion found in a zoo; a tiger found in said zoo; or ...
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Can I add additional stages to my base system in a dependent claim?

I have three systems: a system with one stage two stages are used in the core of system 1 three stages are used in the core of system 1 Can I explain my base system with one stage in an independent ...
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How can I write the four configuration of a system in the claims of a patent?

I want to patent four configurations with the same operating principles. Should I write four independent claims to describe the four systems, and four independent claims to describe the operation ...
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How to add more detail to an element in a dependent claim?

I have a method of monitoring computers. In my independent claim I say a network-connected device. However in my dependent claim I specifically want to say that it is an application server. Is there a ...
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Can you use having as a gerund in a method claim?

A method of cleaning a swimming pools comprising; Having a pool vacuum with a laser range finder attached; Aiming the laser range finder... Is it okay to use "Having" to introduce an element like ...
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How do you reference a method claim from a device claim?

My method claim is what my invention actually does. But my device claim is the thing that I actually want to sell. How do I reference the method claim in my device claim? Something like this? An ...
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Do 2 patents with single claim have the same legal protection as 1 patent with 2 independent claims?

I am wondering whether legally a single patent with Claim A and Claim B allows the same legal protection for the content presented in Claim A and Claim B as two single patents containing in Patent 1 ...
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Difference between an independent claim and a dependent claim for same thing

Is there a difference in patentability, scope, or protection from infringement between the two cases of claims below? case 1 I claim: 1 A piece; a hole in said piece. case 2 I claim: 1 A piece. ...
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Alternative forms of non-exclusive options: “by, inclusively, either of ...”

Does the wording ...(accomplishing something) by, inclusively, either of [option 1 description]; or [option 2 description] (– and conceivably, extendable to any number of additional elements,...
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how to frame independent claim for comparing two components of a system

(Its a sample) Input: A play toy. that has different set of balls. each set has same color of balls. color of balls of one set is different from color of ball of another set. Kindly correct and ...
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additional X" instead of first X and second?

Why would we say further comprising a second X, as opposed to saying further comprising an additional X? Then what if there can be a second, third, fourth, fifth, etc.?
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The singular and plural has been a major issue for me as a pro se first-timer

Nothing I have seen sounds right for my little invention, so I wonder what I'm missing. The invention needs at least one X somewhere on at least the first side of Y for the minimum invention to work. ...
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Does "at least one Y" properly introduce an Y if used for for the first time as well as "a" or "an" does?

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 ...
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Can "wherein" be used before "comprising"?

I am translating a PCT application. Claim 1 recites a device. Claim 2 depending from claim 1 recites a first device and a second device by defining the device in claim 1 as a first device. Below is ...
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In independent claim does "attachable to a Y" establish existence for antecedent

Independent claim: comprising: an X attachable to a Y. Does this establish an antecedent existence of Y to where the dependent claim should now say "the Y" or does the dependent claim need to first ...
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Is a singular word spelling a different word than a plural spelling, therefore screwing up antecedent flow?

If in the first independent claim I say "an X comprising at least one guide mark on the first side" can I then say in a following dependent claim "the guide marks are also on the second side"? Does ...
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What is the meaning commas in a claim? Do commas limit the list?

a tool, comprising: an X, having an X 1 edge, an X 2 edge, an X first face, an X-second face, an X distal end, an X proximal end attachable to a handle; and a Z guide marking on the X first face that ...
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System claim with method steps included by reference

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 ...
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Computer readable medium claim rejected by USPTO examiner

The following claim was rejected by the USPTO examiner for two reasons: For mixing a product and a method. The examiner also stated that the preamble says that this is an independent claim which ...
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Why are independent claim sometimes repeated with a small wording change in a later claim in newer patents

Why is it many newer patents, such as in US10421637, A cranking mechanism, the independent claim 1 is almost entirely repeated in claim 8, except for a small change? I do not find this in older ...
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Claims - Tangible difference between system claims and method claims - 101 thoughts

Does a system claim which state tangible items, for example "processor configured to" help satisfy the "practical application" aspect of the new guidelines which were released in January 2019? I am ...
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Reciting claims for elements whose function can be achieved by multiple different mechanisms

I need to hear some of your strategies adopted to deal with a common situation as described in the title of this thread. As we know, an invention has multiple elements each providing its own function ...
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Is a Markush Group claim less strong than its components written as separate dependent claims?

I am trying to decide if adding a lot of extra claims is worthwhile; in this case it would add about 15 more over just using the Markush group, due to repeating in context of 3 different independents. ...
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Is a claim containing two alternatives valid?

Is this claim valid or is this an example of alternative claiming of one or more species. 2. A method of claim 1 further comprising: enforcing at least one of: application rights, application ...
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Can claim preamble contain terms not present in specification?

I would like to use the term "non pliable" in the claim preamble which does not appear in the specification. However the term "pliable" does appear in the specification but is not specifically defined....
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How to delimit the last element in a list of means?

The claim 2 has a list of means that apply to "the object" but it may be misconstrued that the last element in the list is not "intercepting" but rather "intercepting the object" in which case the ...
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How to separate method from machine in a claim?

Is the claim 2 mixing method and machine and if it is how would you rewrite it to avoid it? 1. A method for doing things comprising: step 1; step 2. 2. The method of claim 1, wherein at least one ...
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Is this a common practice to amend a claim by striking through every word in the original claim?

Is this a common practice to amend a claim by striking through the entire text of the claim and introducing completely new text, instead canceling the claim and introducing a new claim. I mean no word ...
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Nested Claim Construction (US patent practice)

How do you separate the sections of nested method claims to avoid misinterpretation. Claim 1. A method for doing something the method comprising: making square widget comprising: petting the ...
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Repeating claims in a CIP that are identical to those in the parent application or granted parent patent

In a Continuation in Part application, and referring only to those claims from the original application where they, and the specifications they refer to, are remaining unchanged – is there any need to ...
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Use of 'substantially similar' or other phrases describing elements to be similar but not identical

Two icons in different parts of an interface are intended to be recognized as representing the same thing at some level, yet are also distinguished by other visual cues (size, location within ...
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What is the practical value of repeating similar claims in slightly different contexts?

In claims for a computer-implemented invention, what is the practical advantage of repeating similar claims under "a method," "a system," and "a non-transitory computer usable medium" categories? i....
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Combining two possible goals or outcomes in an initial claims statement (see stated example)

Would examiners accept a Claim 1 statement ending like this? : ...in order to execute transmission to, or connection therewith, the method comprising So the issue is whether or not the claim ...
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Distinction between phrases "one or more" and "at least one" and need to include phrase "a plurality of"

In claims, is there any distinction between the phrases "one or more of" and "at least one of"? If "a plurality of" has already been used in the Claim 1 initial statement (e.g., "at least one of a ...
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Rules of thumb for sorting content into Specification vs Claim

When faced with the question: Does this content belong in the Specification or the Claim, What is: The line of thinking? Questions one should consider Expectations of the USPTO examiner? that one ...
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How to develop intuition for writing claim?

I've seen many patent claim examples, and I've tried to write some myself, but each time it feels like I cannot adequately describe/articulate the invention to the level that is needed for the patent ...
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What is the real effect of "a combination there of"?

I wonder what is the real effect of "a combination there of". If I write "a,b,c" vs "a,b,c, a combination thereof". I understand the logical difference. Is there a precedent in which usage in the ...
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How to write claim language for a clasp designed for a variably sized enclosure?

I want to state that the clasping system in my invention can be used in any size of enclosure. Specifically, I have doubts between using the words: "may" or "is" 2 examples: "enclosure may be ...
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Why would a corporation file a continuation that consists of one large claim?

I've found an allowed continuation to a parent patent application, in which the continuation contains a single claim that appears to be one long concatenation of the original 20 claims of the parent ...
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