What is the name of your state? California
As a novice inventor, I am confused regarding the differences between an invention and an embodiment, and some other things (actually a lot of things). My attorney doesn’t have the time or inclination to teach me the basics. So I need some help.
I’m trying to improve an existing patent application (my first) that I had submitted to the USPTO a few months ago. To incorporate the improvements, I’ll probably have to file a continuation-in-part. But for now, I’d just like to fix the errors and weaknesses in the description and claims. One object is to avoid the expense of divisional applications. Another object is to make sure my claims are broad yet reasonable. I’ll use a simple example to describe my problem.
Let’s say there are no toasters yet in the world. The prior art does include oven appliances. All ovens in the prior art have a door, a thermostat, one or more racks, and one gas or electric element under the bottom rack. Nothing more. Toasted bread is in the prior art. It’s typically prepared by placing slices of bread in an oven flat on a rack. But making toast takes a long time and wastes a lot of energy. Portable ovens, ovens having a housing with a vertical opening configured to receive a single bread slice, bread slice lowering and ejection systems, dual heating element ovens, and oven timers don’t yet exist.
Now I have just invented an appliance, the first “toaster”, that comprises the following features, all novel: An automatic timing controller is user set for a desired time interval. A slice of bread is received vertically through an external opening in a portable housing and placed on an upwardly biased support member within the housing. The support member, with the slice of bread resting on it, is manually lowered into an internal chamber, whereupon a latch secures it in the lowered position, the automatic timing controller is started, and dual electrical heating coils configured to heat both sides of the bread slice simultaneously are automatically energized. At the conclusion of the set time interval, the automatic timing controller de-energizes the heating coils and releases the latch. Therewith, the support member pops up and the toasted bread slice is partially ejected from the housing.
The automatic timing controller received a lot of consideration during the creation of the toaster. Upon conceiving the first automatic timing controller, I realized that it was very important in its own right and thought I had better be very thorough with its design. As I improved it I realized that I had developed two very unique and different approaches to its realization and competed designs for each. I can think of many applications for the automatic timing controller beyond the toaster. In fact, the toaster sometimes seems trivial in comparison.
Is the toaster the invention or the embodiment of the invention? If it is the latter, then what exactly is the invention? I understand that another embodiment might show a toaster that can do two or more slices at a time. But that seems obvious. I would think that a remark about that in the description along these lines, “It will be appreciated by those skilled in the art …”, would be sufficient. Does it really need to be shown and described as a new embodiment? Beyond that, what might be considered another embodiment?
Would a standard oven incorporating just one of the elements of my toaster, for example, the automatic timing controller, be acceptable as another embodiment of the same invention? How about if the standard oven used only its standard door and racks, but incorporated most of the elements of the toaster, for example, if it had the automatic timing controller, portability, a size suitable for toasting bread slices, and my novel dual heating coil system (in a top and bottom element configuration)? If not, what if we add an automatically opening front door and an automatically extending oven rack?
Can another embodiment include features not in the first embodiment, for example, a removable crumb collection tray configured under the bread? Is it understandable that such a feature may be incorporated in any of the embodiments? Would an independent claim on such a feature be appropriate?
Would I have to explicitly depict in the drawings or description all such conceivable embodiments to be able to include claims broad enough to cover such variations of my toaster? If necessary, can I add the drawings and descriptions of such embodiments in a continuation-in-part application? In that situation, would the claims relating to the new embodiments, even if nothing really new is invented therein, receive the new priority date?
On its own, the automatic timing controller is useless. It doesn’t toast bread. Is it an invention or is it only considered such if it is part of a larger system that does something useful? Do I have to show other embodiments of other useful systems using my automatic timing controller, such as a washing machine, in order to prove its universal applicability?
The recently submitted patent application includes a very thorough description of each of the two new automatic timing controllers. Can I reasonably hope the USPTO will allow me in the same toaster application to separately and independently claim each one as a stand-alone invention with no reference to the toaster?
In the same toaster application, can I independently claim to have invented an oven with left and right or top and bottom dual heating elements? Do I need to have drawings and descriptions of subsets of my toaster to claim such? Where does the USPTO draw the line?
Can I have several independent claims for each of the individual elements of the new technology in my toaster, for example, a portable oven, an oven housing with fixed upper openings, a novel latched spring biased receiving and ejection system, an automatic timing controller, a dual element heater, a removable crumb collection tray, etc? Or, will I be limited to a claim that just addresses the use of my technology in toasters?
I know that I am confused, and for that reason, my questions may appear confusing. I appreciate your patience in reading this far. Thank you in advance for your advice.What is the name of your state?
As a novice inventor, I am confused regarding the differences between an invention and an embodiment, and some other things (actually a lot of things). My attorney doesn’t have the time or inclination to teach me the basics. So I need some help.
I’m trying to improve an existing patent application (my first) that I had submitted to the USPTO a few months ago. To incorporate the improvements, I’ll probably have to file a continuation-in-part. But for now, I’d just like to fix the errors and weaknesses in the description and claims. One object is to avoid the expense of divisional applications. Another object is to make sure my claims are broad yet reasonable. I’ll use a simple example to describe my problem.
Let’s say there are no toasters yet in the world. The prior art does include oven appliances. All ovens in the prior art have a door, a thermostat, one or more racks, and one gas or electric element under the bottom rack. Nothing more. Toasted bread is in the prior art. It’s typically prepared by placing slices of bread in an oven flat on a rack. But making toast takes a long time and wastes a lot of energy. Portable ovens, ovens having a housing with a vertical opening configured to receive a single bread slice, bread slice lowering and ejection systems, dual heating element ovens, and oven timers don’t yet exist.
Now I have just invented an appliance, the first “toaster”, that comprises the following features, all novel: An automatic timing controller is user set for a desired time interval. A slice of bread is received vertically through an external opening in a portable housing and placed on an upwardly biased support member within the housing. The support member, with the slice of bread resting on it, is manually lowered into an internal chamber, whereupon a latch secures it in the lowered position, the automatic timing controller is started, and dual electrical heating coils configured to heat both sides of the bread slice simultaneously are automatically energized. At the conclusion of the set time interval, the automatic timing controller de-energizes the heating coils and releases the latch. Therewith, the support member pops up and the toasted bread slice is partially ejected from the housing.
The automatic timing controller received a lot of consideration during the creation of the toaster. Upon conceiving the first automatic timing controller, I realized that it was very important in its own right and thought I had better be very thorough with its design. As I improved it I realized that I had developed two very unique and different approaches to its realization and competed designs for each. I can think of many applications for the automatic timing controller beyond the toaster. In fact, the toaster sometimes seems trivial in comparison.
Is the toaster the invention or the embodiment of the invention? If it is the latter, then what exactly is the invention? I understand that another embodiment might show a toaster that can do two or more slices at a time. But that seems obvious. I would think that a remark about that in the description along these lines, “It will be appreciated by those skilled in the art …”, would be sufficient. Does it really need to be shown and described as a new embodiment? Beyond that, what might be considered another embodiment?
Would a standard oven incorporating just one of the elements of my toaster, for example, the automatic timing controller, be acceptable as another embodiment of the same invention? How about if the standard oven used only its standard door and racks, but incorporated most of the elements of the toaster, for example, if it had the automatic timing controller, portability, a size suitable for toasting bread slices, and my novel dual heating coil system (in a top and bottom element configuration)? If not, what if we add an automatically opening front door and an automatically extending oven rack?
Can another embodiment include features not in the first embodiment, for example, a removable crumb collection tray configured under the bread? Is it understandable that such a feature may be incorporated in any of the embodiments? Would an independent claim on such a feature be appropriate?
Would I have to explicitly depict in the drawings or description all such conceivable embodiments to be able to include claims broad enough to cover such variations of my toaster? If necessary, can I add the drawings and descriptions of such embodiments in a continuation-in-part application? In that situation, would the claims relating to the new embodiments, even if nothing really new is invented therein, receive the new priority date?
On its own, the automatic timing controller is useless. It doesn’t toast bread. Is it an invention or is it only considered such if it is part of a larger system that does something useful? Do I have to show other embodiments of other useful systems using my automatic timing controller, such as a washing machine, in order to prove its universal applicability?
The recently submitted patent application includes a very thorough description of each of the two new automatic timing controllers. Can I reasonably hope the USPTO will allow me in the same toaster application to separately and independently claim each one as a stand-alone invention with no reference to the toaster?
In the same toaster application, can I independently claim to have invented an oven with left and right or top and bottom dual heating elements? Do I need to have drawings and descriptions of subsets of my toaster to claim such? Where does the USPTO draw the line?
Can I have several independent claims for each of the individual elements of the new technology in my toaster, for example, a portable oven, an oven housing with fixed upper openings, a novel latched spring biased receiving and ejection system, an automatic timing controller, a dual element heater, a removable crumb collection tray, etc? Or, will I be limited to a claim that just addresses the use of my technology in toasters?
I know that I am confused, and for that reason, my questions may appear confusing. I appreciate your patience in reading this far. Thank you in advance for your advice.What is the name of your state?