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montysimmons
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
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Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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My question: is it allowed to claim a method which is applicable

Resolved Question:

My question: is it allowed to claim a method which is applicable only to a certain apparatus? Assuming that apparatus is also my claim.

I changed the example a bit hoping to make it clear that I need to keep an apparatus in claim 1, and then I claim a method in claim 2 (the technical aspect is not a concern):

1. A system of detecting floating boats, comprising:
two sensors;
a radio;
a controller;
and a box.
2. A method of connecting sensors, wherein the method is applicable to a system claimed in claim 1, the method comprising:
connecting the sensors serial;
and matching the sensors by size.
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  replied 1 year ago.

Mixed Apparatus and Method claims are called hybrid claims. Be very careful here.

 

Both the USPTO and the courts often hold that claims mixing apparatus and method claims as both unpatentable subject matter under §101 and indefinite under §112 ¶2.

 

Restated, an apparatus claim including method steps will be non-statutory (invalid).

 

Types of Valid Claims

(1) Apparatus claim

(2) Method Claim (pure method)

(3) Method performed by an apparatus

(4) Method of using an apparatus

 

Here are your claims

 

1. A system of detecting floating boats, comprising: two sensors; a radio; a controller; and a box.

 

2. A method of connecting sensors, wherein the method is applicable to a system claimed in claim 1, the method comprising: connecting the sensors serial; and matching the sensors by size.

 

You can't have an apparatus in claim 1 and add a method in claim 2. Such is not allowed. Further, your claim 1 is a little strange:

 

"A system of detecting . . ." implies a method claim is following and then you only give structure in the body of the claim instead of "steps."

 

If such a claim was held to be valid, it would be read as if you used: "A system for detecting . . . "

 

You would need to use a format like this:

 

1. An apparatus for detecting floating boats, comprising: two sensors; a radio; a controller; and a box.

 

2. An apparatus for detecting floating boats as in claim 1, wherein said two sensors are connected in series and wherein the two sensors are matched by size.


or

 

1. A system of detecting floating boats, comprising the steps of: providing two sensors electrically associated with a radio and a controller; and providing a box to house said two sensors, said radio, and said controller.

 

2. A system of detecting floating boats as in claim 1, further comprising the steps of connecting the sensors in series and matching the sensors by size.

 

Just do not draft method steps that are dependent from an apparatus claim; this never works. Further, do not add "method" steps inside and apparatus claim. Such a claim will be invalid also.

 

 

 

montysimmons, Patent Prosecutor
Satisfied Customers: 239
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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