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steps in a claim
Posted by Anonymous . updated on 2/26/2009
Hi,
In a method claim which has two or more steps... which introduces a "whatsa", a "fitstop", a "whispet" and a "wuznot"...
Question: If in step a) I recite the step of "[ ... la de whatsa do da ops de whispet dok wuznots ... ]; said whatsa having a fitstop; said fitstop being a whispet; said whispet having at least one of a plurality of wuznots; said wuznots comprising..."
... do I need to recite the "said... being..." stuff again in step 2) if the same [whatsa] etc. are included ?
or, is that redundant?
Also, if the preamble to the claim recites any "said [whatsa] being...", must I necessarily repeat that in the body of the claim? I realize that in some cases I will want to, in order to not be claiming too broadly, but, is it always necessary?
Thanks, quickstudy
Answers (4)
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JSonnab...
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Wow, that was confusing.
The long and the short of it is the claims need to be clear in what they claim. If the examiner is able to follow the claim, and everything has a proper antecedent basis, the claims will be acceptably drafted.
- Jeff
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Isaac
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As best I can tell from your question, reciting the "said being" stuff again would be redundant and likely to reduce understanding.
It could become non redundant if for example you had more than one kind of fitstop in the same claim. But in that case it would be best to introduce some find of label rather than repeating a long line of function or descriptive stuff. So you might have a first fitstop and a second fitstop.
I appreciate the effort to ask a general question rather than to ask for specific legal advice, but in this case I think you went to an extreme that made your question hard to even understand.
Your method claim sure seems to recite a lot of structural elements...
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quickst...
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Thanks for your replies. I'll try again  This is an independent method Claim. Using less obtuse elemental terms here - simple grammar terms instead of thingamabobs - the preamble of the Claim introduces the [subject]. Step a) begins with a simple [verb phrase] involving an [object]. The [object] needs clarifying... partly for simple clarity and partly to introduce enough limitations here that the whole thing doesn't fall apart by having this claim rejected as anticipated by a boatload of art. So, step a) continues... ... said object being [another name for object]; said another-name-for-object being [verb phrase] by a [category of new subjects]; said category-of-new-subjects each being [adjective phrase]; said object having [a relational term] to adjective-phrase. I have drawn some of these limitations from the original preamble, which the Examiner acknowledged but stated that it did not result in a structural difference..., being in the preamble only. What I'm really wondering is this: by so limiting in order to incorporate this needed structural difference in step a) of the Claim, do I also need to recite the same limitations for the same [object] in step b) of the Claim? Thanks for your patience  quickstudy
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Wiscagent
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I still don't know if I follow your example, but perhaps this will help. ?Consider the following claim:
- - - - - - - - - - - - A method of forcing a nail into a block of wood:
a) ?placing a nail, the nail comprising a metal cylinder with a pointed end and a flat end, pointed end down on a block of wood; b) ?holding the nail in an upright position with one hand; c) ?using a hammer, hitting the flat end of the nail really hard; and d) ?if the hand holding the nail is stricken with the hammer, shouting epithets. - - - - - - - - - - - -
Since ?the nail? is defined in step (a), there?s no need to define it again.
Richard Tanzer
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