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Different preambles but the same steps.
Posted by Anonymous . updated on 2/26/2009
Have anybody used a method claims where method X had the same steps as method Y, plus some extra step, though the preambles were different?
An intelligent example 
1. Method for calculating a future value of a commodity comprising:
creating a commodity risk multiplier;
multiplying the current value of commodity by said risk multiplier
2. Method for trading a commodity having calculated future value:
comprising:
creating a commodity risk multiplier;
multiplying the current value of commodity by said risk multiplier;
trading said commodity on an exchange.
Of course I could come up with a broader preamble such as using the word "exploiting" instead of "calculating" and than cover both claims under one preamble but in real life where preamble plays sometime important role this could diminish the clarity of the claims. I assume the example above creates two independent methods even though technically their steps are dependent.
Any ides if ths could adversly influence potential litigation in the future?
Answers (4)
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Wiscagent
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I?m concerned with the wording of claim 2. It seems to fall right into the middle of the limiting versus non-limiting preamble controversy.
Presumably a method could consist of the ?creating?, multiplying?, and trading?? for a commodity that does NOT have a calculated future value. This suggests that the preamble is non-limiting because it does not give ?life and breath? to the claim.
But the ?calculated future value? phrase sure looks like it is a limitation. I just bought some fresh fruit at the grocery yesterday and I did not explicitly calculate their future value. So presumably I could do the ?creating?, multiplying?, and trading?? of the fruit and claim 2 would not read on my activities.
I?d feel much more comfortable with a claim 2A, followed by claim 3.
2A Method for trading a commodity comprising:
creating a commodity risk multiplier;
multiplying the current value of commodity by said risk multiplier;
trading said commodity on an exchange.
3 The method of claim 2A wherein a future value of the commodity is calculated.
If claim 2A is granted, it may be broader than claim 2. If claim 3 (or claim 3 rewritten in independent form) is granted, at least you have a more clear understanding of the scope of the claim.
Richard Tanzer
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Art
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This preamble is this example is limiting for a purpose.
But let me rewrite the question:
If the preamble wasn't limiting would it be truly an independent claim ?
Does anyone know a case where one independent claim was invalidated or canceled and another claim having set identical steps plus an extra step, but different preamble was therefore in question as to be also invalid because it wasn't truly independent?
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Art
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Another question.
Would two claims having the same steps, but different, nonlimiting, preambles be truly independent, or rather considered as one and the same claim but in two different forms.
In almost any case that I can think of a different nonlimiting word used in a preamble will clearly have a different scope.
For example:
1. Method for exploiting a commodity comprising:
creating a commodity risk multiplier;
multiplying the current value of commodity by said risk multiplier;
trading said commodity on an exchange.
2. Method for trading a commodity comprising:
creating a commodity risk multiplier;
multiplying the current value of commodity by said risk multiplier;
trading said commodity on an exchange.
To me exploiting would have a broader scope than trading. Therefore the second claim would be probably considered as a needles multiplication of the same claim. However what if I added another step to claim 2.
2. Method for trading a commodity comprising:
creating a commodity risk multiplier;
multiplying the current value of commodity by said risk multiplier;
trading said commodity on an exchange;
obtaining valuable consideration from said trading.
Now the similar nature of these claims isn't so clear.
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art
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Actually I probably should have used a word exchanging instead trading since the trading is than repeated in the steps and therefore can be again construed as limiting.
So think of the examples above with "exchanging" instead "trading"
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