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All Questions in Patent Drafting >> Negative Limitation in Apparatus Claim

Negative Limitation in Apparatus Claim

Posted by Anonymous . updated on 2/26/2009
Claim say:
A system comprising:
a single widget operable to generate a signal that reflects wiggling;
a recorder for recording wiggling data from the widget; and
a processor for processing the recorded data so as to classify the wiggle.

Examiner say:
Non-final rejection, old art shows system with two widgets.

Little monkey say (according to marching orders):
Claim say SINGLE widget, old art show two widgets, claim therefore patentable. No amendment needed.

Examiner say:
Final-rejection. Claim say COMPRISING single widget, comprising mean open to any number of widgets you fool. Previous rejection stands, now final.

Big monkey say:
Call the Examiner. Ask the Examiner how to construct a claim amendment to clarify that the claim is limited to a system with no more than one widget ... put the onus on the Examiner.

Little monkey now worry ... onus on Examiner?
What is onus on Examiner?
Is that anything like pie in the sky?

I don't mind bouncing an idea off of the Examiner ... but calling and asking him to write a claim without some amendment proposal seems like ... oh, i dunno ... something a big monkey would do.
(Pro Se inventors excepted, I don't mean any disrespect to non-USPTO-registered folks asking such advice ... I know that is sometimes done.)

The invention entails an improvement over old art by better utilizing data from a single widget to accomplish what previously appears to have required two or more widgets. While method claims could be drafted to recite inventive steps in the data utilization, marching orders discourage significant re-drafting. Of course, marching orders so far have lead merely to a final rejection without apparent progress. I didn't write this application, but I'd like to make some progress if we go to RCE.

One somewhat minimally amended claim proposal looks like the following wherein ALL CAPS identify the change.

A system comprising:
a single widget operable to generate a signal that reflects wiggling;
a recorder for recording wiggling data from the widget; and
a processor for processing the recorded data so as to classify the wiggle;
WHEREIN THE ONLY WIGGLING DATA PROCESSED BY THE PROCESSOR TO CLASSIFY THE WIGGLE IS WIGGLING DATA FROM SAID SINGLE WIDGET.

What do y'all primates think?

Thanks for your time.

Little Monkey

Answers (18)
 
JimIvey
Quote
Claim say:
A system comprising:
a single one and no more than one widget operable to generate a signal that reflects wiggling;
a recorder for recording wiggling data from the widget; and
a processor for processing the recorded data so as to classify the wiggle.

I think your amendment that the recorder receives signals from just the one single widget is good, too.

That's interesting re "comprising".  I think if you limit the number to "no more than" n in an element, even "comprising" excludes things that include more than n of them.  If anyone has authority one way or the other, that would be helpful.

You might also try "wherein the single widget is the only widget in the system."

I think any of those (my two suggestions or your one) would be good enough to go up on appeal with.  Although, I'd still like to see what others think of my amendment above.

Regards.
 
 
Isaac
I haven't fleshed out a good answer, but I think I would lean toward characterizing the processed data as being the data from a single widget rather than limiting the number of widgets in the system.

Which answer is best might well depend on things not evident. ?For example if the recorder filters out all data except for that of a single widget, maybe you can limit things at the recorder.

I often struggle with framing negative limitations that don't give up way to much. ?
 
 
Littlem...
Once again you guys have given me good thougths.

I'm working on an amendment that puts the limitation where the novelty lies ... at the processor. The devil is in the details that I don't want to disclose though.

I share Isaac's concern about Jim's suggestion, but I like the elegance of Jim's specific wording. It's less clumsy than my variants on the same approach. I have hypertechnical concerns. For example, if the "and" in the phrase "one and no more than one" is synonymous with the arithmetic plus operator, then the phrase entails two possible values, namely one and two. Don't break out the cheez whiz Jim, I know my concern is hypertechnical.

And Roger, Oh Roger ... It would be refreshing to see an Office Action with a rejection based on an argument like that.  I might be being cynical here ... but rejections, especially obviousness rejections, often seem more rudimentary than that ... they seem more like concatenations.

Thanks All!

I don't mean to discourage further posting on this thread. I'll be watching.
 
 
JimIvey
Quote
For example, if the "and" in the phrase "one and no more than one" is synonymous with the arithmetic plus operator, then the phrase entails two possible values, namely one and two.

I'm going to have to remember that the next time someone tells me to take one and only one cookie!  That may just come in handy!

Regards.
 
 
ram
A system comprising:
a single widget operable to generate a signal that reflects wiggling;
a recorder for recording wiggling data from the widget; and
a processor for processing the recorded data so as to classify the wiggle.


Hi:

I have some questions regarding the language of the above (Litltle Monkey's) claim.

1.      In the above claim, it is said that ?a signal that reflects wiggling?. Is it proper to use ?that? in a claim ? is it not ambiguous.

Can it be amended it like - ?a single widget operable to generate a signal, the signal reflecting wiggling;

2.      Where is the antecedence for ?the recorded data??

3.      Where is the antecedence for ?the wiggle?             

Thanks,

Ram
 
 
Isaac
Quote
A system comprising:
a single widget operable to generate a signal that reflects wiggling;
a recorder for recording wiggling data from the widget; and
a processor for processing the recorded data so as to classify the wiggle.


Hi:

I have some questions regarding the language of the above (Litltle Monkey's) claim.

1. ? ? ?In the above claim, it is said that ?a signal that reflects wiggling?. Is it proper to use ?that? in a claim ? is it not ambiguous.


I don't think it would be ambigous.  Is there some question which object that refers to?

Quote
Can it be amended it like - ?a single widget operable to generate a signal, the signal reflecting wiggling;


yes

Quote
2. ? ? ?Where is the antecedence for ?the recorded data??


3. ? ? ?Where is the antecedence for ?the wiggle?  ? ? ? ?


Dropping descriptors does not create an antecdent basis problem unless doing so creates an ambiguity.  The antecedent for 'the wiggle' is 'a single wiggle'.  

'The recorded data' seems to be a problem because even while the recorder is described as capable of recording data, no data is actually described as being recorded.  
?

 
 
JimIvey
Quote
Dropping descriptors does not create an antecdent basis problem unless doing so creates an ambiguity.  The antecedent for 'the wiggle' is 'a single wiggle'.  

Boy, I wish you had been my examiner on a large number of cases!!

FWIW, Isaac's right (or at least I agree with him), but during the 1990s, there were a lot of examiners that would have disagreed.  However, it's a simple fix by amendment -- don't know if Festo would kick in though...

Regards.
 
 
Littlem...
Here is another variation on Jim's approach.
A system comprising:
EXACTLY one widget operable ...
a recorder ...
a processor ...

I'm not so happy myself about the antecedent issues being raised. Inbound European claims often befuddle me over such issues. On the one hand I do typically know what they're getting at ... on the other hand I don't understand why European writers typically don't use language as precise as that of US patent drafters. These issues don't just arise as a by-product of translation. I've seen plenty of multiple dependent claims, depending from all previous claims, limiting a feature first introduced only in the immediately preceding claim in defiance of any logic scheme familiar to me ... no matter the language. Europeans do make good wine and beer ... but will they ever visit the moon?

Bye Now!

 
 
ram
Isaac:

I still didn?t get it.  How can ?a single widget? be an antecedent for ?the wiggle??

Also, i have been advised by my senior to avoid using words such as 'that,  'which', and other similar words. What is your position in this regard.

Thanks,
Ram
 
 
Littlem...
Yeah - yeah -yeah ... seniors are apt to forbid terms like: that, which, such that, whereby, thereby, wherein and on and on and on.

We're going to run out of English words to use to connect things folks.

I think whether such terms are unclear depends on the context. For example, "a monkey that might relate associatively to the consumption of things or entities that may or may not comprise a banana or a derivative product thereof with or without vanilla wafers" is a phrase that seems unclear. Does the monkey eat bananas? Who knows? The lack of clarity is not embedded in the word "that." The lack of clarity unfolds in the words beyond that "that" ... got that?

I can write a clear phrase using "that." For example, "a monkey that is eating a banana" is clear enough to me. The monk is eating a banana for Pete's sake ... whoever Pete is.

I don't mean to harangue you Ram ... but often I feel people are ready to abandon a good English word merely because some particular usage of the word was litigated and somebody got spanked.

I agree a few words are patent issue sensitive ... like the word "means," which is a panic button word.

I also don't mean to vehemently defend the use of the word "that" in the claim scenario I presented. One might otherwise recite:
a single widget operable to generate a signal, wherein the signal reflects wiggling

But look, now we've got "wherein" ... that's no good, and we're all the way down to the letter W in the dictionary ... ok ... that leaves only X, Y, and Z words ... let's see ...

a single widget operable to generate a signal xylophone reflects wiggling

no ...

a single widget operable to generate a signal ytterbium reflects wiggling

no ...

a single widget operable to generate a signal zeppelin reflects wiggling

still no ... and we're all out of English words!


Later
 
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