7 votes

Urgent - My Patent Application received a Non-Final Rejection, Advice?

Hire a professional. 1) Neither question you ask can be answered with the information you gave, and even if you posted your application I doubt anyone would be willing to wade through it to give you ...
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  • 491
7 votes
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What is the role of dependent claims?

When filing a patent, the goal of the Independent Claim(s) is to define the invention as broadly as possible. Your goal is to obtain Freedom to Operate, with enough "white space" around your Preferred ...
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  • 1,775
5 votes
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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 ...
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  • 7,043
4 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 ...
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  • 7,043
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 ...
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  • 25.6k
4 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 ...
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  • 25.6k
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 ...
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3 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 ...
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  • 25.6k
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. ...
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  • 25.6k
3 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 ...
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3 votes
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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 ...
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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/...
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  • 25.6k
3 votes
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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 ...
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  • 25.6k
3 votes
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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 ...
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  • 25.6k
2 votes

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

You wouldn't want to file identical claims. Identical claims will receive a "Statutory Double Patenting" rejection. On other note why to pay fee twice on claim already filed and pending. Unlike the "...
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  • 133
2 votes

How detailed can be independent claims in a PCT utility application?

Independent claims can be extremely long. Refer to the patent for the game "4 Square in the Air", which contains a number of sub-clauses that describe the set-up of a playing field, apparatus and some ...
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  • 1,775
2 votes

Claims with reference to single dependent claims

Yes, that is permissible and defined in paragraph 6.18. For instance, US 7,756,129 is a grant with 401 claims, although they are not all in serial as in your example. Keep in mind that writing ...
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  • 1,775
2 votes
Accepted

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

Could they reject it because an equipment to detect X already exists (no matter if they use spoon in their dependent claims)? Yes, Claim 1 will be rejected if the examiner finds prior art showing ...
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  • 1,013
2 votes

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

As Macas answer already says, you can't have dependent claims that protect anything outside the scope of the independent claim. What you can do would be saying “... controlled by an input device, ...
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  • 5,827
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, ...
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  • 7,043
2 votes
Accepted

Multiple references US vs EU

In the US, there is an extremely punitive fee of USD 820 for each multiple dependent claim. Moreover, since the US isn't so strict with added matter arising from combining claims independent of each ...
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  • 7,043
2 votes

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

I agree with DonQuiKong's answer in that your dependent claim seems to be broader than your independent claim, which is not appropriate. I will therefore limit myself to your later question about "can ...
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  • 7,043
2 votes
Accepted

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

Your dependent claim, if I understand your question correctly, won't be allowable for two reasons: 1: A dependent claim may not leave out any limitation of the independent claim it depends on. Your ...
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  • 5,827
2 votes

A US independent claim never starts with a definite article 'The'

I did my own research and found out that: Among 3,019,895 utility patents published 04/01/2005 through 16/01/2018, 1,707 patents (%0.057) have at least one independent claim starting with 'The' ...
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  • 133
2 votes
Accepted

Do consistently disparaged embodiments lack claim support?

Do disparaged embodiments lack claim support? Probably. I will preface this by saying that, much to my frustration, I could not find a case on all-fours with what you are proposing. It could well a ...
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  • 7,043
2 votes

How to develop intuition for writing claim?

Practice, sure. Someone correcting the claims would help though .. You could try the old european patent attorney exam questions pertaining to claim analysis and design. There are courses and such ...
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  • 5,827
2 votes
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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 ...
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  • 390
2 votes

Rules of thumb for sorting content into Specification vs Claim

The specification explains the invention with detail and with multiple embodiments and variations on those embodiments. It does not necessarily single out the novel aspects from the rest of the ...
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  • 25.6k
2 votes
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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 ...
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  • 25.6k
2 votes
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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 ...
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