dependent claims

[marigny]

Say I have an alternative embodiment for my invention. Say this embodiment has 3 different types of fastening means-each one illustrated in the detailed description. When writing a dependent claim including the alternative embodiment, can I describe the embodiment as follows: "....as claimed in claim 1, ....blah blah blah is attached with fastening means.."
or would I need to say, "....is attached with fastening means comprising....a, b, or c..."
or would each fastening mean need to be a claim of its own?

Or does it depend on each case? I just didn't know if a dependent claim has to be more specific than just saying means-especially in the case of a crowded art where a, b, and c unique. Or is having it clearly drawn and described in the detailed description enough so I can just say means?

Thanks! I need to start paying you!What is the name of your state (only U.S. law)?

 

[divgradcurl]

Say I have an alternative embodiment for my invention. Say this embodiment has 3 different types of fastening means-each one illustrated in the detailed description. When writing a dependent claim including the alternative embodiment, can I describe the embodiment as follows: "....as claimed in claim 1, ....blah blah blah is attached with fastening means.."
or would I need to say, "....is attached with fastening means comprising....a, b, or c..."
or would each fastening mean need to be a claim of its own?

Or does it depend on each case? I just didn't know if a dependent claim has to be more specific than just saying means-especially in the case of a crowded art where a, b, and c unique. Or is having it clearly drawn and described in the detailed description enough so I can just say means?

Thanks! I need to start paying you!What is the name of your state (only U.S. law)?

If you are writing your claims in means-plus-function format, then your level of detail (at least in the independent claims) can be a lot less than for apparatus or system claims, because the scope of the means-plus-function claim will be limited to the embodiments disclosed and enabled in the specification.

Typically, when you are writing a means-plus-function set of claims, you could do something like

1. ...is attached with fastening means...
2. The whatever of claim 1, wherein said fastening means is A.
3. The whatever of claim 1, wherein said fastening means is B.

That sort of thing. You could write the independent claim as "....is attached with fastening means comprising....a, b, or c...", but this could be limiting if there is arguably a fourth embodiment disclosed in the specification.

 

[marigny]

I mean more specifically with dependent claims. For instance:
1)…the blah blah blah blah
2) The blah of claim 1, further including fastening means to secure an external whatever OR
3) The blah of claim 1, further including fastening means A, B, or C to secure an external whatever OR
4) The blah of claim 1, comprising A to secure an external whatever

In the main claim there are no fastening means. The fastening means come about with the additional structure that is an alternative embodiment.

Can a dependent claim be so vague as to say ‘means’? Also, do you have the option of ‘A, B, or C’s’ or ‘A, B and C’s’ in a dependent claim-or do they need to be more specific?

In this example my alternative embodiments have alternative ways to be fastened-and even these ways to fasten are crowded. I have many alternative embodiments with alternative embodiments I guess. I have too many claims so I am hoping I can combine some by using the example number 2 (ideally) or number 3.

Or would it be suffice to just say:
5) The blah of claim 1, further including an external whatever secured with attachment means
And just add specifics if they require limitations later?

Thanks again! I promise I’ll stop with the questions soon, as I am running out of time!!

 

[divgradcurl]

I mean more specifically with dependent claims. For instance:
1)…the blah blah blah blah
2) The blah of claim 1, further including fastening means to secure an external whatever OR
3) The blah of claim 1, further including fastening means A, B, or C to secure an external whatever OR
4) The blah of claim 1, comprising A to secure an external whatever

You could write the claims in a fashion similar to your example:

1. …the blah blah blah blah
2. The blah of claim 1, further including fastening means to secure an external whatever
3. The blah of claim 2, wherein the securing means is A.
4. The blah of claim 2, wherein the securing means is B.

That sort of thing, It might also be possible to lump all the various embodiments into a Markus group: http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_h.htm

And there are other grouping possibilities in section 2100 of the MPEP as well.

Or would it be suffice to just say:
5) The blah of claim 1, further including an external whatever secured with attachment means
And just add specifics if they require limitations later?

You could do this. Remember, dependent claims really aren't required -- dependent claims are, by definition, narrower than the independent claim from which they depend. If you are enforcing a patent, then if the accused device infringes a dependent claim, it also infringes the underlying independent claim.

The reason you have dependent claims at all is so that if an independent claim is rejected during prosecution, or if an independent claim is invalidated during a reexamination proceeding or during an infringement action, then there are dependent claims that may survive and remain enforceable. If all you have is the independent claim -- which is one way to write a patent, and some patents are written this way -- then a challenge can kill the entire patent.

Remember, obtaining a patent is one thing -- obtaining a patent that is broadly enforceable, and likely to survive a challenge, is much more valuable, and much more difficult.