Questions tagged [claim-construction]

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What is the role of dependent claims?

I am very new to filing patents, What is the role of dependent claims? Couldn't I just have one claim with any details required? What is the difference in haveing one, two, or ten claims? When I ...
Ahmad's user avatar
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6 votes
1 answer
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Okay to use "optionally" in a claim?

In a claim, is it okay to use something like: ... node A connects to node B, optionally encrypted, such as via SSL or TLS. I know I can add a dependent claim instead, but is there any advantage of ...
uncaged's user avatar
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4 votes
1 answer
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How detailed can be independent claims in a PCT utility application?

I am currently writing claims for a PCT utility application. It appears my independent claim is rather lengthy and can be broken down into many dependent claims, but that is not what I am after. My ...
kabuto's user avatar
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4 votes
2 answers
707 views

Claims - When is it a good idea to let the Patent Examiner make one for you?

I heard you can request the examiner formulate one claim for you. When is this a good idea? If the goal of a patent is to merely document the existence of some novelty without trying to claim the ...
JSH's user avatar
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3 votes
3 answers
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Urgent - My Patent Application received a Non-Final Rejection, Advice?

I have written a computer program which combines two patented ideas, but provides a new and much needed function, and service for that matter. Hence the big money corps stand to make from the use of ...
dave's user avatar
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3 votes
1 answer
399 views

Claims with reference to single dependent claims

I understand that one cannot claim with reference to a multiple dependent claims as set forth in MPEP 608.01(n) Dependent Claims[R-11.2013]. However, can one have claims with reference to a single ...
Deon P Hugo's user avatar
3 votes
3 answers
847 views

Can I use exact same independent claim in a Continuation as my original granted patent, but with different dependent claims?

Can I use exact same independent claim in a Continuation patent that I used in my original issued patent, but with different dependent claims? For example, if my issued patent had independent claim ...
James Louis's user avatar
3 votes
1 answer
1k views

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 ...
Charles's user avatar
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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 ...
Charles's user avatar
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3 votes
1 answer
47 views

US 2013/0206605 A1 too broad, little novelty

To include production of hydrocarbons in title of this application is over-reaching. Where is the disclosure to support its inclusion? Shouldn't there be a way to sanction those who pollute the ...
Richard D. Breen's user avatar
2 votes
1 answer
121 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 ...
Sazzad Hissain Khan's user avatar
2 votes
1 answer
56 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 ...
MENG's user avatar
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2 votes
1 answer
50 views

In an independent claim is there any advantage of stating all the critical antecedents up front rather than introducing them individually?

The example is an invention depending on precise definitions of a series of antecedent phrases that will be repeated numerous times in a series of following claim parts, some of the phrases being ...
Charles's user avatar
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2 votes
2 answers
53 views

Follow-up question about mentions of how the user interacts with a graphical user interface

I had a previous question about stating a specific class of computing device, or input method of a computing device. This is a related follow-up question. Assume a form of click-and-drag-over ...
Charles's user avatar
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2 votes
1 answer
58 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'...
Sazzad Hissain Khan's user avatar
2 votes
2 answers
975 views

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 ...
nmnir's user avatar
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2 votes
2 answers
157 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 ...
user avatar
2 votes
1 answer
60 views

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....
Charles's user avatar
  • 633
2 votes
3 answers
159 views

Do consistently disparaged embodiments lack claim support?

Disparaging the prior art/alternative embodiments, especially in combination with a limited characterization of the disclosed embodiments (e.g. only describe embodiments without the disparaged ...
user132162's user avatar
2 votes
0 answers
35 views

Is something that a user does, an step of a method

Can I write a claim as: A method for detecting X comprising the steps of: Entering Z by the user, Specifying the dimensions of Y by the user ...
Ahmad's user avatar
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1 vote
2 answers
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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 ...
PrivateUser's user avatar
1 vote
3 answers
63 views

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 ...
User's user avatar
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1 vote
2 answers
105 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 ...
jordanpg's user avatar
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1 vote
2 answers
110 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, ...
Sazzad Hissain Khan's user avatar
1 vote
2 answers
54 views

Stating a specific class of computing device, such as touchscreen devices, in the first independent claim

Is there necessarily any risk or self-imposed limitation in having a Claim 1 statement like this – A method for [fill in details here] on a computing device controlled by touchscreen input, and ...
Charles's user avatar
  • 633
1 vote
1 answer
60 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 ...
jordanpg's user avatar
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1 vote
1 answer
67 views

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 ...
ASA's user avatar
  • 103
1 vote
2 answers
305 views

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 ...
IPRGHTS's user avatar
  • 11
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?
Bear Bile Farming is Torture's user avatar
1 vote
2 answers
81 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 ...
PatentosPite's user avatar
1 vote
2 answers
71 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,...
Charles's user avatar
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1 vote
1 answer
89 views

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 ...
Pro Se Hole's user avatar
1 vote
1 answer
54 views

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 ...
Keir Finlow-Bates's user avatar
1 vote
1 answer
53 views

Can a claim be rejected if it lacks a clause that Prior Art includes?

Prior Art: A system which detects X and makes an alarm Claim: A system which detects X
Ahmad's user avatar
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1 vote
1 answer
156 views

Do they regard the whole claims to reject a patent based on Prior Art or only independent claims?

Let's bring an example (note I am naive in writing or understanding claims): Independent claim 1: It is an awesome equipment to detect X, dependent claim 2: the equipment of claim 1 detects X using a ...
Ahmad's user avatar
  • 297
1 vote
1 answer
41 views

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 ...
bhuff36's user avatar
  • 315
1 vote
1 answer
23 views

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?
Timothy Parlor Sr's user avatar
1 vote
1 answer
101 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. ...
Chanoh Park's user avatar
1 vote
2 answers
80 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 ...
Lou's user avatar
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1 vote
1 answer
98 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 ...
rama9's user avatar
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1 vote
1 answer
115 views

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 ...
Pro Se Hole's user avatar
1 vote
2 answers
390 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 ...
Jimski's user avatar
  • 225
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 ...
Jimski's user avatar
  • 225
1 vote
1 answer
24 views

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 ...
Charles's user avatar
  • 633
1 vote
1 answer
125 views

Do they regard the whole claims of my patent for detecting the patentability of others' application or only my independent claims?

Let's bring an example : Independent claim 1: It is an awesome equipment to detect X, dependent claim 2: the equipment of claim 1 detects X using a fork. If it was granted, would it mean that no one ...
Ahmad's user avatar
  • 297
1 vote
1 answer
42 views

collection of medical data online

In reference to the patent: US20060184393 Does this patent implies that no one trying to collect medical data online can actually do it? Is not this patent too broad and lacking of a discovery? Can ...
Diego's user avatar
  • 113
1 vote
1 answer
79 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 ...
tasukete's user avatar
1 vote
2 answers
127 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 ...
Jimski's user avatar
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1 vote
1 answer
25 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 ...
Allan Scott Barber's user avatar
1 vote
0 answers
31 views

Does the phrase “data stored in the memory or persistent storage of the device” (if used in a claim) adequately cover data storage functions?

More specifically: The claim is not in regard to a new type of memory or storage, or a new usage of storage. It only refers to a computing device's capabilities to store data both temporarily and semi-...
Charles's user avatar
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