tag:blogger.com,1999:blog-6733236595417664807.post3124729821124569617..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI reverses indefiniteness of dependent claim using "comprising" when independent claim used "is one of"Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger12125tag:blogger.com,1999:blog-6733236595417664807.post-22526779367386555762012-12-13T09:35:08.519-05:002012-12-13T09:35:08.519-05:00"Do we ignore the "nut" alternative..."Do we ignore the "nut" alternative of claim 1 when looking at the "holder" in claim 3? That is, does the "substrate holder" of claim 3 somehow only have meaning if the "component" of claim 1 is slotted with the "holder" alternative?"<br /><br />Of course! It's pretty common to permit "A or B" in an independent claim and then narrow it down to just "A" (i.e., "wherein it's A," plus perhaps some additional limitations...) in a dependent claim. Dependents need only be logical subsets of the independent.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-82272196764918393262011-11-24T14:58:22.678-05:002011-11-24T14:58:22.678-05:00The thing of it is that I'm still not sure if ...The thing of it is that I'm still not sure if the Examiner merely applied an (improper) per se rule to make the rejection or actually put as much thought into it as was done the above posts.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-78920667244702773932011-11-23T15:51:15.773-05:002011-11-23T15:51:15.773-05:00"The nut can't be a substrate holder.&quo..."The nut can't be a substrate holder."<br /><br />Why not ya nut? Tiny substrates or large nuts ftw!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-88958199182257295542011-11-23T15:48:41.316-05:002011-11-23T15:48:41.316-05:00"Any confusion expressed in reader comments s..."Any confusion expressed in reader comments seems to arise from ignoring the fact that the claimed chamber "component" can also be an aggregate of elements."<br /><br />That is correct, it could be, but it isn't in claim 1. Which is why you need "additionally" in the dep to make it clear to the reader that you are now making an aggregate part having multiple parts. <br /><br />"Claim 2 as claimed requires the chamber component to include BOTH one (or even more) of the listed elements in Claim 1 and a distinct gas injection plate (in addition to a nut, for example).<br />"<br /><br />Close but no cigar, that's what they want the claim to say, but as presently worded the claim simply requires a nut etc. which has an integrated gas injection plate. Pretty big ol' nut!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-5749282252844856562011-11-23T15:45:55.390-05:002011-11-23T15:45:55.390-05:00Well it surely wasn't indefinite, but the exam...Well it surely wasn't indefinite, but the examiner might have simply made an objection to the dep. and said that it needed "additionally" before "comprising" beause that is what they're trying to claim. That is a grammatical issue, not an indefiniteness one. There is only one, totally unambiguous interpretation of the claim, the literal one. And that one is different than the one they wished to claim. <br /><br /> As is they've simply claimed a wafer lift pin, a wafer centering ring, a[n] alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, or a bolt that comprises a gas injection plate which is not technically impossible. <br /><br />But it also is not what they wanted to claim. <br /><br />"As a matter of plain English, "component is a nut" doesn't mesh with the further limitation the "component includes a gas injection plate."<br /><br />Sure it does, it is simply a very large oddly shaped nut that includes a gas injection plate, which, if this isn't an original claim they probably don't have WD for and which isn't what they wanted to claim anyway. <br /><br /><br />Also, remember the old mantra: It is best to object rather than reject when possible. Petitions usually aren't filed, but many prosecutors feel like appealing anything. Plus, it seems like most prosecutors don't pay much attention to objections and simply make the change if it isn't something drastic. If you can frame the issue as merely one of grammar I always have sky high rates of compliance.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-51813059956137009262011-11-23T00:11:58.622-05:002011-11-23T00:11:58.622-05:00Any confusion expressed in reader comments seems t...Any confusion expressed in reader comments seems to arise from ignoring the fact that the claimed chamber "component" can also be an aggregate of elements. Therefore, for example, dependent Claim 2 as claimed requires the chamber component to include BOTH one (or even more) of the listed elements in Claim 1 and a distinct gas injection plate (in addition to a nut, for example).<br /><br />The Board's decision makes perfect sense. The use of "is" instead of "comprising" in Claim 1 is unfortunate but not indefinite. [Why open/closed transition is an issue? If chamber component cannot be other than those explicitly recited in Claim 1, then Claims 2-5 will be indefinite.] It is further unfortunate that this issue cannot be resolved earlier (prior to appeal) by changing "is" to --comprising--. <br /><br />By the way, in Karen's hypothetical, if the transceiver were not a sub-set of the Ethernet interface (i.e., further limiting the Ethernet interface) or a separate element (i.e., further limiting the network interface), then Claim 2 will be indefinite.<br /><br />Peter ChangAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-41306933924126364152011-11-22T11:17:00.634-05:002011-11-22T11:17:00.634-05:00If the nut can't be a substrate holder (and I ...If the nut can't be a substrate holder (and I haven't read the spec, so maybe it could be), then that part of the scope of Claim 1 is excluded from the narrower scope of Claim 3. Claims are supposed to be given their broadest reasonable interpretation consistent with the specification. If an interpretation results in an unreasonable interpretation, the interpretation is improper.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-20340372188017938322011-11-22T10:40:41.597-05:002011-11-22T10:40:41.597-05:00>Did the Board add its own rejection or just
&...>Did the Board add its own rejection or just <br />>let it go? <br /><br />The Board simply reversed the indefiniteness rejection. It did not affirm on alternative rationale and/or new grounds. <br /><br />>they're unworkable with with the "is one <br />>of" elements<br /><br />Yes, I agree that using alternatives ("is one of") makes the scheme unworkable. See my comment from earlier today.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-55433453859673996752011-11-22T10:38:35.362-05:002011-11-22T10:38:35.362-05:00>Claim 1 says it can be a holder and claim 3
&...>Claim 1 says it can be a holder and claim 3 <br />>says that holder can be a substrate holder. <br />>That's consistent and further limiting. <br /><br />Yeah, except that's not *all* that claim 1 says. Claim 1 also says that the component can be a nut. The nut can't be a substrate holder. <br /><br />The interesting question here is how to reconcile the alternatives of claim 1 with the specific instances of the dependent claims. <br /><br />Do we ignore the "nut" alternative of claim 1 when looking at the "holder" in claim 3? That is, does the "substrate holder" of claim 3 somehow only have meaning if the "component" of claim 1 is slotted with the "holder" alternative? <br /><br />I've never seen a claim pattern like this, so I haven't thought this through. But at first glance, it bothers me.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-66763564164872805482011-11-22T10:14:01.511-05:002011-11-22T10:14:01.511-05:00I don't see anything indefinite about claim 3....I don't see anything indefinite about claim 3. Claim 1 says it can be a holder and claim 3 says that holder can be a substrate holder. That's consistent and further limiting.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-72432894648748706842011-11-22T10:13:40.462-05:002011-11-22T10:13:40.462-05:00open/closed issues aside, the dependent claims sti...open/closed issues aside, the dependent claims still seem indefinite in that they're unworkable with with the "is one of" elements (gas injection plate). Did the Board add its own rejection or just let it go?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-67750699747059931052011-11-22T10:01:45.620-05:002011-11-22T10:01:45.620-05:00I agree, Karen. The Examiner's logic here mak...I agree, Karen. The Examiner's logic here makes some sense.Anonymousnoreply@blogger.com