Using OR in a claim

The "or" can be used in a claim, when an integral function of an invention, such as:

an dial enabling said appliance to access cold, warm or hot water

but not in situation where there is a choice of machines, i. e., a different machine, such as

machine running on diesel or gas

it is all obvious, common sense.

Business Methods and Software Patents are perfectly OK

The most frequently overlooked support for computer software and business models being patentable - US Patent Act Title 35, The United States Code, §101:

Whoever invents or discovers any new or useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore...

That is why this stnadard rule of thumb must be heeded: claims should be drafted from the point of view of the server, the subscriber, AND the software manufacture etc. (i.e., In re Beauregard claims).

A way to add to an idea - Continuation in Part

This tactic has a simple advantageous goals:

1. To add to a previously filed application, without risking a prior art infringement (102e).

2. To enable a partially new entity (new inventor) to file an application based on a prior application by a partially different entity, and not to risk infringement of parent application (paragraph 102e) see US Patent Laws.

Claim Language is from Mars, 1

We never say "a hot pot for placing on said magical pad". "Placing" is a very vague verb. It has become to be used as a noun, wherein the patent has no use for such a noun, i. e., a step of placing. Therefore, these formulaic norms are used: X is for disposing on/juxtaposing with Y = X for placing on Y this norm hold true for temporarily, or intermittently placing of X on Y However, when X is placed and affixed on Y permanently during manufacture, for example, then the formulaic norm is: X is disposed on Y=X is part of B

Avoid Lamborghini at all cost

Beware of making claim which is dependent on a component, workpiece or a system that is necessarily located outside the US (i. e. its national boundary) as it may limit infringement: it would make very easy for a US party to actually avoid using this foreign component and exploit your patent to the fullest, unpunished. Preferably claim this type from perspective of US component. Thus if you are have a patent being written on a system that uses a Lamborghini car (to test motor oil, tire endurance, or moonshine gasohol, better avoid claiming the use of this particular car, and instead, claim a car powered by an engine having at least 6 cylinders, having aerodynamic outer dimensions generally patterned after modernistic perceptions of Italian Renaissance, and capable of accelerating from 0 to 60 mph in 2 seconds.

To patent submarine patenting:

I have critiqued silly and ridiculous patents in the previous and other posts, but here is the attempt to patent submarine patents, filed by someone who knows nothing about jurisdiction (out of pity, the PTO should return his application fee): Submarine patents U.S. Patent Application 20080221912 David James Harris, of Great Britain 1. A method of seeking patent protection for an invention, comprising: a) filing a first European Patent Application for the invention at a first date; b) filing a second European Patent Application for the invention at a second date not more than one month later; characterised in that the second European Patent Application is a divisional European Patent Application claiming the filing date of the first European patent application.

David, my boy, a patent issued in the United States is completely useless for a method performed completely outside the United States. Now, I can understand a pro se inventor filing such wackiness, but I am shocked that a US law firm is helping a foreign inventor file such excrement:

Computer system for distributing a validation instruction message U.S. Patent Application 20080201334 Justin Ryan Simpson (Legal Rep: Brooks Kushman) Claim 1: 1. A computer system for distributing a validation instruction message, the computer system being adapted to communicate with an interface, a specification database and a plurality of European agent computers, the interface including: a European patent identifier receiver adapted to receive a European patent identifier; and a country selection receiver adapted to receive a country selection, and the specification database being adapted to store a plurality of European patent specifications, wherein, when the computer system receives a European patent identifier and a country selection, the computer system is adapted to: (a) obtain, from the specification database, a European patent specification corresponding to the European patent identifier; and (b) provide the European patent specification and the validation instruction message to a European agent computer corresponding to the country selection.

Justin, more than likely, someone is going to implement this computer system outside the United States, making your U.S. patent (if it issues) completely useless. Such as implementing this system in Europe, where sadly because the EPO and courts love to betray science, engineering, semantics and law with their silly "technical effect" drooling, the European sibling of this patent application will never issue.

Application For The Method of Patenting Paralegal Process:

This is the classic attempt at dealing with the European fetish for the pompousness of using the characterized by vs. the good old American said: System for facilitating the preparation of a patent application with an automatically variable omnibus form paragraph U.S. Patent Application 20080256428 Milton; Harold W. DICKINSON WRIGHT PLLC Claim 1: A method of preparing a patent application including DESCRIPTION and CLAIMS sections by using a computer program comprising the steps of: presenting an omnibus form paragraph preceding the CLAIMS section, drafting a claim in the CLAIMS section including at least one key, storing a key explanation describing the use the key, characterized by scanning the claims for the key, automatically inserting the key explanation in the omnibus form paragraph in response to the presence of the key in the claim. 3. A method as set forth in claim 1 further including storing "characterized by" as the key. 5. A method as set forth in claim 1 further including storing "said" as the key.

Patent claims don't have to be easy and readable

If you are second-guessing n examiner or a prospective buyer, or a competitor, don't act on the naive urge to write out and describe claim components in an impressive language. Claiming, according to the US Patent Law, has NO enablement requirement OR readability requirement. A claim might read like this: 2. The cryopump as in claim 1, wherein said fluid conduit is fluidly connected to said group of manifolds and operatively communicating with said variably-opening orifices. None of the components are described in a technical, enabling manner, but the description is maximally encompassing the scope of the invention regarding the component of the device claimed in claim 1. Thus, do not limit a claim in order to make it more readable to an average person. The claims are for attorneys and other people who enjoy reading contract documents. Only enhance readability if it will not unnecessarily limit the claim.

On Festo and "Means"

In patenting, Festo is a doctrine of equivalence: if a patent claims a, b, c - this can sometimes also include c (broad claiming). But since the actual Festo, if one starts off broad and narrow, then one cannot claim broader (doctrine of equivalence) again.

Means + Function is no-no in patent claims. The combination refers to a too general component expressed functionally (which begs for a method claim language: a module for cooling), as opposed to structurally (what it is, i.e., a cooling module, and not only what it does). See the Patent Writing:Claims tag for similar topics.

Halliburton applies for the method of troll patenting

It was UC Berkley, among others. Then, Microsoft. President Obama better sign a decree that makes it a criminal offense for anyone in the patent world to use the word troll. It is a meaningless term that becomes more and more pointless each day, due in part to the following absurd wackiness applied (and breezed through by the US Patent law) for by Halliburton Energy Services:

Patent acquisition and assertion by a (non-inventor) first party against a second party U.S. Patent Application 20080270152 Claim 1: A method for a non-inventor first party to acquire and assert a patent property against a second party, the method including the first party performing the following acts: obtaining an equity interest in the patent property; writing a claim within the scope of the patent property, the claim being written to cover a product of the second party, where the product includes a secret aspect, the secret aspect including an unobservable aspect, where writing the claim includes performing research using a computer to convert the unobservable aspect to an observable aspect; filing the claim with a patent office; offering a license of the patent property to the second party after the patent property issues as a patent with the claim; and attempting to obtain a monetary settlement from the second party based on the assertion of infringement of the claim. Patent property - both novel and vague term. Aspect is already used in the claim within a different aspect. I guess Dick Cheney needs novel and non-obvious ways to make business off government contracts.

Device claims: configured vs. able

In previous posts like this I discuss the importance of handcrafting claim language, down to carefully picking verbs and nouns that clinch the spirit of the invention while reserving the maximum territory of the art.

An important difference exists between method and device claims. Method or system claims vary in their language, too: in a system claim, components of the system are designed, i.e., configured; whereas in a device claim a component is designed to perform a unique function, i. e., to enable, or to be capable of - better yet - to enable a function.

In device claims use configured to and never able to.

Thus, the language for a valve: a control device for enabling fluid communication between said electric mechanism and said collector upon demand. More to follow.

A rehearsal for writing claims

In Europe , with its stuffy, literary, and sanctimonious bragging style of patent claims, characterized by refers to the point of innovation. Here in US we claim the aspect of invention by using having or featuring.

Again, first time you mention something it is always a, otherwise an examiner will return a no antecedent basis response.

Consider a dependent claim: Anything introduced there in the preamble is henceforth (in the claim or independent) the. Anything introduced after the preamble is said.

Identification is a noun. Identifying is a verb. Steps in a method claim are verbs.

Another lesson in writing claims

In patent claim language, comprises and includes mean the same. The use of comprises is acceptable between preamble and body of an independent claim. Further comprising is also OK in the independent claim.

In dependent claims, however, the language must use include and not comprising unless it uses further comprising.

In method claims (for ex. a. adding to database; b. associating data; c.parsing data groups), a, b, c do not imply order unless:

the claim language specifically mentions that "wherein step d is effected before step c"

or

the preamble of the claim leads into the body of the claim with comprising the steps, and not comprising steps.

How to claim more powerfully through smart synonyms

In this Patent Writing: Claim category I have analyzed absolute musts for patent claims. There is more to it - besides the absolute necessity for making claims acceptable, and more so, have substantial claiming power, an inventor has to be on constant lookout for strategic synonym use.

For -use

Thus, I have already mentioned that For can be easily Use:

...said lever for said activating of... >> said activating uses said lever

one and only one -----a single:

...said computing unit containing one and only one RAM shunt...

...said computing unit containing a single RAM shunt...

The enough trap

And here is the famous colloquialism that can even kill a patent: the enough trap. In patent language, where there is no OR but AND (read this post), enough means an "undetermined quanitty beyond which the results are unwanted, or negative. This is the solution

enough----- a sufficient number of

...said steps 3 to 7 performed enough to yield transparent mixture...

enough here, in patent language, means do them indiscriminately, maybe in any order, or any number of the steps enough to...

it should be:

...said steps 3 to 7 performed sufficient number of times to yield transparent mixture...

Good Structures Connect Operationally

This is good for any language describing a structure of anything:

attached to associated with<----------> operationally connected to

Done is effected

done by ----------effected by

...a widget for acting... (if the action is a widget featuring means for acting (or maybe a widget operative to)crucial to the invention)

instead of

x is effected by means of y

is better served by (also read this) since means can be literally too widgety of a term

x is effected by using y

Simple, isn't it?

Your mom has never taught you these nonos:

In claim language these should be followed:

Never say, “capable of”rather “for”

Never use “comprises” in body of claim. (For an explanation of preamble and body read this post)

Don’t use “includes” or “consists of” in the preamble.

Case law: §112, paragraph 6 limits “means for” to what’s to what’s in specification and equivalents thereof. “a mechanism for” may work better.

never say "capable of". say "for".

More of these gems to follow.

Markush group gives punch to your claims

Patent claims, as we have learned in this category, is not an easy part of a patent, but they can make your life as an inventor a lot easier if the claims exploit all the possible claim tools known in the profession. Thus if you have invented a gadget that can be a gizmo, or a widget, or a thingie, or a dab, then you need to say it int eh claims. The catch it, you cannot use OR. In claims, AND is and and or. Claims, in this case, use the Markush group formula. According to this formula (X selected from the group of Y consisting of A, B and C) your invention's claim reciting the gadget's alternatives would look like this: ..., wherein said gadget is selected from the group gadgets consisting of a gizmo, a widget, a thingie and a dab. The only instance in the claim where OR can be admitted is when claiming an option on a device control, such as a washing machine dial: ...settings include operating a regular wash, a power wash, a spin, and a wash or spin only... aren't claims fun?

How to make patent claims speak a powerful technical language

When a current policy of claiming machines are "in" and software is "out", then computing devices are defined as machines. Therefore, it is a Machine that receives, adds, calculates, and compares. See a previous post discussing the policy of software-machine equivalence.

An algorithm is a computer executable code for adding, analyzing, comparing, processing, etc.

A proficient, professional patent writer can define a single invention in multiple ways, such as a method (method for...), apparatus (apparatus that …), a system (system comprising of...), and a computer program (that …).

US PTO allows three independent claims with 17 dependent claims for a basic filing fee, extra claims incure a per item charge. See more on claims language in the category of Patent Writing: Claims.

The essence of a claim is a strategy of article management

Claim is a checklist of the different components or steps in an invention. Each claim is a concise statement of what the applicant believes to be a patentable invention. The basic structure of a claim must follow the preamble-body design:

A widget for casting figurines, the widget comprising:

everything up to the widget is nonbinding, non-legal preamble. The preamble is convenient location for introducing elements, often non-inventive, in a free way, without risking their introduction in the body of the claim, and possibly over-limiting the scope of the claim.

The above language is for independent claims, the claims that are widest in scope and serve to start a chain of dependent claims that narrow, gradually, the scope of the invention down to the intended concept of the invention.

A dependent claim starts with this preamble:

The widget as in claim 1, wherein...further including...

or

The widget as in claim 1, further comprising:

In method claims, the widgets are steps in the process, therefore, they are continuous verbs: The broadcasting as in claim 1, further comprising digitizing, serializing, and forming packets from data generated by said computer. Here said is a strategic use of claims article that avoids the problem of vague precedence sometimes created by the use of the, and surprises of using the indefinite article a to introduce an undeclared, new element.

Claim language skimps on words but projects scope-grabbing power

comprising is used only once in each claim. Only in the preamble is it not exclusive.

(The preamble is a legally non-binding part of a claim, by the way:

2. The channel system containing a converter and a hashing module, the system associated with said external display device....

The channel system containing a converter and a hashing module, the system

is a preamble, the rest is the body of the claim)

Instead of is we use including or having

(For example:

...said display device is a liquid crystal display...

should be

...said device having a liquid crystal display...)

As a matter of principle, any language used in a claim should be non-restrictive because you a patent examiner is free to interpret each word as limiting, hence is may restrict the device to be the liquid display only, and contain nothing else.

The term means is used as as little as possible.

It is indefinite and implies a potential and not a structural element.

…designed and configured to…is for device claims:

..the device having the means for said lever...

should be

...the device designed and configured to attach said lever...

– in method claims instead of means, we use for [action]

the device provided with means for registration of...

should be

the device provided for registering...

notice that registering is consistent with the method language, which requires action verbs(registering, associating, calculating, opening, admitting) and not abstract nouns (registration).

Isn't this easy?

The psychotic ad-in-bread patent kills itself by flying into infinity

Here's a gem of a patent and claim language: US Patent 6,421,986 (Method of advertising by distributing targeted promotional materials inside packages of bread) c. placing a packet, which contains one or more pieces of the promotional materials, inside each said package at the bread-making facility based on one or more factors selected FROM THE GROUP CONSISTING OF THE SPECIFIC TYPE OF BREAD TO BE PACKAGED AND A RETAIL DESTINATION OF SAID PACKAGE OF BREAD, is indefinite, and self-limiting, all at the same time: Section 112 of the US Patent Law requires that a patent claim specifically point out and distinctly claim what the applicant regards as the invention. In bygone days, there was jurisprudence supporting the proposition that the word "or" created an ambiguity in the claim that prevented it from being specific and definite. To avoid that infirmity, somebody invented a way to get around the "no-no" of saying red, green, orange, blue, brown, gold, yellow OR purple. Then somebody started writing claims saying: SELECTED FROM THE GROUP CONSISTING OF red, green, orange, blue, brown, gold, yellow AND purple. It means the same thing but avoids using the forbidden word OR. This practice was judicially affirmed in the Ex parte Markush case, a decision by Asst. Patent Commissioner Kinan in 1924. Eventually, wise folks discovered that the word OR really isn't so bad if it is used correctly. See In re Harnisch, 631 F.2d 716 (CCPA 1980). These days most patent examiners and courts won't consider a claim defective merely because it contains a recitation using the term OR. It's sorta like what happened when the CAFC finally came out with the decision in State Street Bank that merely because a claim recites a method of doing business, it isn't automatically outside of the patent statute. But old habits die hard, so even though there are a lot of patent claims issuing that contain the word OR, we're still dutifully taught to write Markush Groups, if only to avoid the possibility of encountering an old examiner who hasn't read Harnisch and would write an "indefiniteness" rejection just because he finds an "or" in the claim. The claim you cite would read a lot simpler if the draftsman had just used an OR to join the two alternatives. Whether either of the two alternatives themselves introduces indefiniteness into the claim is another question, which it is appropriate to raise, regardless of whether the conjunction was the word OR or the Markush litany. The answer would probably be found by looking to the specification and deciding if something specific and definite was described for each of the alternatives. Yes, it is jarring to encounter a claim that includes the "overkill" of a Markush group joining just a pair of alternatives, while it looks to you as if one or both of the alternatives themselves might not survive an inquiry as to their definiteness. Another aspect of Markush claiming, as it relates to chemical practice, is that there is supposed to be a common characteristic among the recited elements so that there is unity of invention. But that's another story. The Markush group in the ad-in-bread claim as being applicable to the class of factors used in selecting the materials to be placed inside the bread packages. I see two classes of selection factors: bread type, and bread destination. The use of "consisting of" closes the set. That seems explicit, even though the domains of possible bread types and destinations are not enumerated. According to the MPEP (Sec 2173.05(h)), "[t]he materials set forth in the Markush group ordinarily must belong to a recognized physical or chemical class or to an art-recognized class." A factor is not a "material", but current practices do not seem to exclude factors from use in Markush groups. A selection factor is probably an "art-recognized class," where "type" and "destination" are each a kind of selection factor. Kindly check out 6,202,053, (Method and apparatus for generating segmentation scorecards for evaluating credit risk of bank card applicants) examiners Stamber and Kazimi. It uses something similar, using the term "factor group" in two places (steps a. and b.): 1. A computer implemented method for evaluating credit risk of bank card applicants comprising the steps of: a) dividing a population of bank card applicants into a plurality of sub-populations using a processing unit, based on a first factor selected from a factor group consisting of length of credit history, number of reported trades, reported delinquency, bank card utilization, and revolving balance acceleration; b) dividing at least one of said sub-populations into additional sub-populations based on a second factor selected from the factor group, the second factor being different from the first factor selected from the factor group; c) developing a scorecard for each of said plurality of sub-populations and additional sub-populations; d) applying one of said scorecards to a bank card application; and e) scoring said application, based on said applied scorecard. Thus in the 986 bread promotional material distribution method patent, the kinds of selection factors are fixed and explicit (bread type or bread destination), although, yes, the range of outcomes (type may be white, wheat, rye, 2-grain, ..., n-grain, ... ; destination may be Kroger, Meijer, Wal-Mart, ...) is much larger. In this case, I don't think that enumerating each bread type and each destination into two Markush groups is as enabling as defining the classes of factors. I like the term "factor group" better than just "factor." As you pointed out, this is further complicated by claiming "one or more" of such factors. I read this to mean that the selection path may be by bread type, bread destination, or both. Some materials my go into 3-grain bread, regardless of destination. Some materials may go to all Kroger stores, regardless of bread type. Some packets may go only into 5-grain bread packages destined for Wal-Mart. From an enabling point of view (have not read the patent), I could build something from the 986 language in Claim 1. No novelty and all obviousness. No comment. Maybe some comment: The Markush part appears OK, but the claim is unclear. I don't have a problem with this type of Markush either, since it is the "factors" that are being delineated and not the type of bread of destination. There is no need for further detail. As you've pointed out, however, the claim is vague in describing "one or more factors". Hopefully, it is defined in the specification. Another problem is that the claim is unclear in what the phrase "based on one or more..." is referring to. There are at least three meanings that I could think of: 1. Does it mean that the act of "placing a packet" depends on the type of bread or its destination? So, if the bread is whole wheat, then no placing of a packet occurs? If its going to Miami, then they get a packet? 2. Or, does it mean the promotional materials themselves are different depending on the type or destination of the bread? Raisin bread gets scratch-and-sniff cards? Rye bread gets coupons for fiber supplements? 3. Or, does it mean the number of pieces of promotional materials depend on the type or destination of the bread? Loafs headed to Alaska get multiple mail-order catalogs? Those to New York get a single copy? No comment on the above confusion. I am sure, though, that it is completely explained in the specification, but not enjoying the protection of corresponding claims.