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Questions tagged [claim-construction]

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2 answers
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who has the burden of making up the claims of a patent, the inventor or the attorney?

This isn't obvious to me. I would guess that the inventor has the burden of creating the specifications and then the attorney would formalize it into legal language. But when it comes to the claims, ...
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2 answers
33 views

A claim that is more general than one in prior art

Supposed that in prior art, this claim exists: Triangular shaped object Circular shaped object Square shaped object Would the following claim be allowed: Triangular shaped object Circular shaped ...
1 vote
1 answer
28 views

Appearance of words in Claims

In writing my Independent Claim is it necessary that every item term, nouns, identifying parts or processes of the invention be included in said Independent Claim? I currently have Dependent Claims ...
1 vote
2 answers
48 views

relationship between claims and embodiments

When drafting a utility patent applications, which component is decided first, the claims (scope) or the embodiments? Does the claims come first and then the inventor furnish as much embodiments as ...
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1 answer
88 views

Scope of a method claim when it uses terms that are narrowly construed in an apparatus claim

I'm trying to decipher a competitor's patent (US only), which follows the usual system-method-CRM format for computerized patents (in this case, a standard computer with standard peripherals running ...
1 vote
2 answers
136 views

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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2 answers
31 views

in a method claim, how to word it such that the order of certain steps can vary?

Method claim: The server receives a request from User A containing the unique id of a professor on the server's database; This request is stored on the database; x) a time slot is determined for this ...
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1 answer
52 views

is "either...or" a term acceptable in claim

suppose I need to write a claim for below image, that panel B can either attached to the surface of panel A or to the edge of panel A, is this acceptable in claim, or I have to use alternative in this ...
2 votes
2 answers
160 views

Multiple references US vs EU

In the EU its customary to have claims like Method for... Method from claim 1 plus ... Method from claim 1 or 2 plus ... ... (only dependent claims here) Method from one of the previous claims plus ...
1 vote
2 answers
134 views

How can I use a "for each" clause in a patent claim?

Consider the claim: A method comprising: accessing a line, the line comprising a plurality of points; for each point on the line: generating an X. Do I now have a plurality of X's? Do I need ...
1 vote
1 answer
69 views

What are the implications of including human beings in the description and claims?

Consider the claims: 1. A method comprising using a computing device to do X. 2. A system including a computing device, wherein the computing device can perform X. that is enabled by: The system may ...
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1 answer
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When acting as one's own lexicographer, is there any prohibition against functional definition?

Suppose my claims recite a "memory" (in the context of a computer arts invention). The novelty of the invention is not in the memory itself. Next, suppose I define memory in the ...
1 vote
1 answer
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Claims/Priority Dates

Will method claims receive the same priority date if they are filed after product claims are filed first, or can there be a combination of both in one patent application?
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1 answer
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Strategy to prevent a competitor from selling part of a disclosure?

Say I have: Claim 1. A bed-level meter, comprising: a (novel and non-obvious) probe; and a (novel and non-obvious) sensor. The probe and the sensor are physically separate (imagine the probe ...
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1 answer
42 views

How to word this claim to deter sneaky manufacturers?

For example, Preferred scenario 1: My device has a processor and some electronic gadget wired to it. The processor makes the gadget do something. Sneaky scenario 2: My electronic gadget may be ...
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1 answer
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Introducing an object for the time in an "or" clause: a/an or said?

Which is correct? ... comprising an A, or a device which may be characterized as an A, ... or ... comprising an A, or a device which may be characterized as said A, ... Update: Think about it: ...
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1 answer
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Patent boilerplate for a processor embodiment (not enablement)?

My disclosure requires a processor. This processor behaves like an Arduino (and in fact the prototype uses an Arduino) which is an SBC (Single-Board Computer). The processor may just blink an LED in ...
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0 answers
28 views

Will this simple claim cover 36 embodiments?

Will this simple claim cover 36 embodiments? I claim: 1. A device, comprising: a. a thingamabob comprising at least one selected from the group consisting of: a foo; a bar; and ...
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1 answer
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How to introduce two instances of an antecedent that are not directly related?

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) ...
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1 answer
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How are the elements of a claim determined?

If a hat = cap + visor, then how is it determined that the elements are cap and visor? Is this determined by the claim language used in the claim? Meaning, the elements are defined by the inventor? So ...
1 vote
1 answer
28 views

If an invention requires an X number of whatever, does a specific X has to be explicitly stated in the patent applicable?

My invention can work in general if it has 2 or more compartments. Can I just make it as general as possible and say "2 or more compartments", or must I claim a specific number?
1 vote
2 answers
84 views

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 ...
1 vote
1 answer
66 views

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 ...
1 vote
1 answer
112 views

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. ...
1 vote
2 answers
120 views

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, ...
2 votes
1 answer
127 views

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 ...
1 vote
2 answers
105 views

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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1 answer
103 views

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 ...
2 votes
1 answer
59 views

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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2 answers
73 views

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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1 answer
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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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1 answer
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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 ...
1 vote
2 answers
72 views

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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2 answers
36 views

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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2 answers
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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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1 answer
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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 ...
2 votes
1 answer
61 views

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 ...
0 votes
1 answer
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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 ...
0 votes
1 answer
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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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1 answer
150 views

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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2 answers
90 views

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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1 answer
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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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1 answer
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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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1 answer
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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 ...
1 vote
1 answer
107 views

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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2 answers
454 views

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 ...
3 votes
1 answer
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How common and how acceptable is the use of ordered lists and the phrase "and combinations thereof" as the last component of a Markush Group claim?

Admittedly this is squeezing two questions into one, but they're both directly about Markush Group claim construction. From all I've read, the structure of this type always uses "selected from the ...
1 vote
2 answers
461 views

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 ...