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Specifying sequence of steps
Posted by Anonymous . updated on 2/26/2009
Hi. This is a topic that popped up in another thread. But I'm not sure of the conclusion.
For a method claim comprising a series of steps (a)__, (b)__, (c)___, my understanding is that simply writing such a claim does not specify that the sequence must be carried out in that order. There were suggestions for contorted phrasing to get around this if the sequence is critical. But could I be direct and make life simpler by writing:
A method for __ comprising the steps of (a)__, (b)__, (c)__wherein the steps are performed in the sequence listed.
Or for those who are fond of "said":
A method for __ comprising the following steps, said steps to be performed in the sequence listed: (a)__, (b)__, (c)___.
Thanks.
Answers (7)
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patentp...
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I have used:
A method comprising the ordered steps of:
(a) . . .;
(b) . . .; and
(c) . . . .
Also, phrases like "subsequent to step (a)" and the like.
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PA
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Another option:
A method, comprising:
doing a
in response to doing a, doing b; and
in response to doing b, doing c...
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patentp...
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Quote in response to doing a, doing b
I'm curious as to what "in response" means in this context. To me, there's a stimulus-response relationship in that "doing a" somehow triggers or otherwise inititates "doing b". Might there be some confusion there? A litigator might have a field day with it.
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PA
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Quote I'm curious as to what "in response" means in this context. To me, there's a stimulus-response relationship in that "doing a" somehow triggers or otherwise inititates "doing b". Might there be some confusion there? A litigator might have a field day with it.
I probably should have clarified that "in response to" was only an example. My intention was to suggest that you could indicate ordered steps within the steps themselves, as opposed to the preamble or in a wherein clause.
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smgsmc
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Quote I probably should have clarified that "in response to" was only an example. ?My intention was to suggest that you could indicate ordered steps within the steps themselves, as opposed to the preamble or in a wherein clause.
Hi. This round of discussions is again leading me to conclude that crafting the claims to indicate sequence can run into problems. Is there a reason not to stipulate the sequence in the preamble or in a "wherein" clause? It still appears to me to be the clearest and straightforward and that it will work in all instances...I don't have to come up with a different approach to suit different instances. But experienced practitioners don't seem to like to do that way. I'm trying to understand why. Thanks.
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clarkla...
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Quote Is there a reason not to stipulate the sequence in the preamble or in a "wherein" clause?
Certainly wherein clauses would work, but techniques similar to the one Bill suggests seem to flow more naturally.
For example
A method of making a cake comprising:
? assembling cake tiers to form a layer cake
? putting candles on the layer cake. ? ?
The above claim clearly indicates an order for the two sub processes without implying that there are no intervening processes (such as icing or decorating). ? If only a few steps in a process must ?be claimed in an order, then I think many practitioners would use the above technique.
One reason that this question might not come up too often is that specifying an order in the claim is often unnecessary. ? If the order is not necessary to distinguish over the prior art, perhaps it isn't necessary to specify the order in the claim. ? I haven't heard of any cases where failure to tie down a sequence order in a claim created a 112, 1st paragraph issue.
*correction, I believe I should have cited PA as the source for my example rather than Bill.*
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Wiscagent
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"If the order is not necessary to distinguish over the prior art, perhaps it isn't necessary to specify the order in the claim."
That's true. I've also been involved in situations where the prior art discloses a cyclic system (step A, then step B, then C, and repeat). Even if the application claims (in this order) step B, step A, then step C; the prior art anticipates; because during cycle #1 the prior art system does step B(1) and during cycle #2 the system does step A(2), then step C(2).
In this scenario, narrower claims (perhaps dependent) specifying that intervening steps do not occur, or that the system works in batch mode, or some other limitation would be required to distinguish over the prior art.
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