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5 votes
Accepted

Okay to use "optionally" in a claim?

Is it okay to use "optionally" in a claim? No, for two reasons. The purpose of an independent claim is to define the scope of the protection that you seek. Including an optional feature does not ...
Maca's user avatar
  • 6,178
4 votes
Accepted

Repeating claims in a CIP that are identical to those in the parent application or granted parent patent

You include the claims you haven't yet claimed and want to claim. You can't have the same claim word-for-word in more than one patent. It would be double patenting. If you didn't care about making ...
George White's user avatar
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4 votes

Computer readable medium claim rejected by USPTO examiner

Yes, I do. Check out Claim 10 of US10067111B2 Which is an independent System claim referring to a method claim And not only that, but the examiner proposed the amendment. Check out the response to ...
Gabriel Hendricks's user avatar
3 votes

Can claim preamble contain terms not present in specification?

It is best not to use terms in a claim that are not present in the specification however it will not necessarily be objected to as indefinite. I assume, in your example, that the specification does ...
George White's user avatar
  • 29.1k
3 votes

How to develop intuition for writing claim?

One on-line resource is Patent Drafting for Beginners: A prelude to patent claim drafting at ipwatchdog. The "bible" of the mechanics of claim drafting is Faber on Mechanics of Patent Claim Drafting. ...
George White's user avatar
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3 votes

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

It's purely a stylistic difference, based on how the drafter thinks the claim would be most clearly described. Notably, there is no scope difference. The real benefit is to allow you to explain each ...
Maca's user avatar
  • 6,178
3 votes
Accepted

How can I write the four configuration of a system in the claims of a patent?

You can draft an independent claim for each system, and an independent claim for each method, as you mentioned. The thing is that not every jurisdiction accepts more than one independent claim in a ...
the Europeist's user avatar
3 votes
Accepted

Can I add additional stages to my base system in a dependent claim?

In general yes, that is what dependent claims are used for. However, the base system in the independent claim will need, on its own, to be patentable. Also dependent claims add elements/constraints/...
George White's user avatar
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3 votes
Accepted

Broadening an independent claim using depending claims

NO A dependent claim, by definition, is a narrowing of the claim from which it depends. The independent claim could just have "a lion" and a dependent claim could say, "where the lion ...
George White's user avatar
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3 votes
Accepted

Two alternative element in one independent claim

Claims are hard to draft and your approach might not be artful but alternatives are allowed in EPO claims if they don't get too confusing. A claim, whether independent or dependent, may refer to ...
George White's user avatar
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3 votes
Accepted

Why inventor will use "consisting" instead of "comprising" transitional phrase in a patent claim?

To avoid prior art. If you invent a 3 wheel car and you say “comprising 3 wheels” you have not specified a 3 wheel car since comprising is open ended you have essentially said “at least 3 wheels”. ...
George White's user avatar
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3 votes

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

I've been told that using human beings in any context is a problem. It's not obvious to me why. According to the law (in U.S.), patent claims can not recite a human being per se. See https://www....
bhuff36's user avatar
  • 645
2 votes

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

Is it essential that the computing device has a touchscreen? If not, then it should not be in your independent claim. It is generally irrelevant whether it is your most likely implementation or not, ...
Maca's user avatar
  • 6,178
2 votes

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

Prior art anticipates if each claim element of the later patent is found in the prior art. Here, each claim element of claim a system which detects X is found in prior art and therefore prior art ...
user7875084's user avatar
2 votes
Accepted

What is the real effect of "a combination there of"?

First, the phrases are incomplete because they're missing the conjunction word "and" or "or". The effect should be a rejection by the Examiner under section 112 for being indefinite. To appreciate the ...
Chris's user avatar
  • 360
2 votes

Why would a corporation file a continuation that consists of one large claim?

They did it to get one narrow patent issued early while continuing to fight for a broader patent. The continuation application (15/851,879) was filed with the narrowest claim and filed with an ...
George White's user avatar
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2 votes
Accepted

Is this a common practice to amend a claim by striking through every word in the original claim?

It is not at all common practice to cross out all of the words and replace them with other words. Just cancel the claim and add a new one at the end, using the next number. In the U.S. the original ...
George White's user avatar
  • 29.1k
2 votes
Accepted

Is a Markush Group claim less strong than its components written as separate dependent claims?

Written as a long group, the claim will be invalidated by finding something in the prior art with anything on the list (and otherwise satisfying the claims). Written individually, only the single ...
George White's user avatar
  • 29.1k
2 votes
Accepted

Is a claim containing two alternatives valid?

The number of alternatives and the way the claim is drafted does not really matter, and it should not depend on the examiner whether a restriction requirement is issued. The alternatives should be ...
the Europeist's user avatar
2 votes
Accepted

Can claim preamble contain terms not present in specification?

Use of a term as a preamble when it is not present in the Description: a higher chance of an indefiniteness rejection. That is, can be used against you. If the claim's steps actually define the term ...
peanuts's user avatar
  • 76
2 votes

Reciting claims for elements whose function can be achieved by multiple different mechanisms

First of all you should consider whether the technical feature you are referring to is necessary for the definition of your invention, maybe you can claim your invention without any such feature. In ...
the Europeist's user avatar
2 votes

Claims - Tangible difference between system claims and method claims - 101 thoughts

35 USC 101 says - Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, ...
George White's user avatar
  • 29.1k
2 votes

Is a singular word spelling a different word than a plural spelling, therefore screwing up antecedent flow?

Yes, 'marks' lack antecedent basis. You have positively declared one mark, with the possibility of more marks*. Your dependent claim must introduce additional marks if you want to switch to the plural....
Gabriel Hendricks's user avatar
2 votes

How to add more detail to an element in a dependent claim?

That wording is a little confusing in that a claim is either to a method or to a thing. Of course methods can involve things and sometimes things can be characterized by steps they perform. Without ...
George White's user avatar
  • 29.1k
2 votes

Broadening an independent claim using depending claims

George White's response is correct. I just want to add a couple remarks. Some jurisdictions enforce the Doctrine of claim differentiation (the US and Germany at least), some others do too but in a ...
the Europeist's user avatar
2 votes
Accepted

Who is the inventor in an invention composed of several already existing sub-devices?

I an an inventor, not a lawyer, so this is my best understanding. The specific criteria is whether you identify at least one claim which wouldn't have been there without your contribution. Ideally you ...
Eric S's user avatar
  • 11.2k
2 votes

Who is the inventor in an invention composed of several already existing sub-devices?

The strategies for what to claim and what embodiments to detail in a patent application might fall into the domain of your patent attorney (or patent agent). In terms of the hierarchy of sub-...
George White's user avatar
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