4

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 the 3rd Office Action in the file wrapper. End of claim 12 - "a microprocessor programmed to sequence the system to perform continuous measurements within each ...


4

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 explain how a non-pliable widget is made into a pliable widget. If you also explain why one would want a pliable widget and what you can do with a pliable widget ...


3

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 alternatives, provided that the number and presentation of alternatives in a single claim does not make the claim obscure or difficult to construe and provided that ...


2

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 claim numbering is maintained until after allowance. As part of the process of preparation for issuing a granted patent the claims are renumbered.


2

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 event that it should be part of the claimed subject-matter, you should try defining it in a generic way so that all the alternatives are encompassed. For ...


2

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 assessed from a technical standpoint, and restriction requirement should be issued when the following occurs: There are two criteria for a proper requirement for ...


2

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 you use in the preamble, lesser chance of an indefiniteness rejection. The term can be used in the preamble even if not present in the Speci as filed (that is, ...


2

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, subject to the conditions and requirements of this title. A method is a process and a system is a machine. They are clearly in two different statutory ...


2

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 the framework of the wording of your claim 1 it is not 100% clear that the dependent claim you suggest would be proper. If claim 1 is a well formed method claim, ...


2

Most if not all patent laws across Europe, including the European Patent Convention, require the claimed subject-matter to be clear without resorting to any other part of the patent specification. This can be said more nicely as "the claims must be clear in themselves when read by the skilled person (not including knowledge derived from the description);...


2

You do not usually define terms in a claim but in the specification. Patent applicants are allowed to redefine words and give them special meanings. You need to do it thoughtfully because if you pin down a definition too strongly you may be inadvertently narrowing the claim.


1

Can I answer a 112 rejection by making it less specific? Yes, if the claim refers to something specific that is not supported in the specification then amending to a less specific wording that is supported in the specification might fix a 112 (indefinitness) rejection and result in a broader claim if warranted. It is hard to know if your specific case will ...


1

If this is a U.S. application I would consider more than one independent claim. It is often a good idea to come at the invention from a different perspective in a second independent claim. Claims are not for "explanation" but for definition of the boundaries of the invention. An exception can be in the case that your independent claims sound a ...


1

Overly broad claims can run afoul of novelty and obviousness issues. How broad a claim you can get allowed and enforced is entirely based of the uniqueness of the invention in relation to the prior art. In a sense the scale is binary - rejected or allowed.


1

You could draft it like this: Device comprising: at least one X, the at least one X comprising a first X at location A. Device according to claim 1, wherein the at least one X further comprises a second X at location B. Device according to claim 1, wherein the at least one X further comprises a second X at location C.


1

You need to study the office action but my suspicion is that the examiner is taking the position that a claim that references another claim is, by definition, a dependent claim. The examiner is then taking the position that a dependent claim must necessarily be of the same statuary class as the claim it depends from since, by common definition, it is a ...


1

After some digging I found two references in issued patents. · U.S. Patent 10,492,242, Wegmann, et al., Claim 20 · U.S. Patent 10,492,208, Petersson, et al., Claim 12 Both of these patents claim computer readable medium and include a method of another claim by a reference. I would say those are Williamson style claims and they are pretty clear when an ...


1

In 2nd prong test of Step 2A of "2019 Revised Patent Subject Matter Eligibility Guidance", "practical application" is to be 'evaluated on the claim as a whole'(note 24 page') 1. The term 'additional element' requirement in this context connotes 'claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception, ...


1

No, you are not mixing different categories if that is what you mean. A step of a method may be carried out by a device, machine, etc., and that limits the scope of the claim, which refers to a method not a machine. You could even draft a claim depending upon claim 2 in which you are claiming a method but you further limit the online computer system, for ...


1

The followings are not to be construed as legal advice or opinion. If the two icons differ by look ('visual cues'), location ('in different parts of an interface') and purpose (a thing at 'different level', assuming your 'some' is not the typos error for 'same'), then I believe they are neither same, nor 'substantially same'. One suggestion is to treat ...


1

It can make sense to focus on one or two types of claims. Each type of claim gives you the chance to go after a different category of infringer. A distributor or importer of a system may never take it out of the box and turn it on. They would not be liable for direct infringement of a method claim because they never performed the method. Think about who ...


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