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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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Questions about previous example. 1) About using ‘-‘ to

Resolved Question:

Questions about previous example.

1) About using ‘-‘ to make reading easier: Can I use ‘sensor-system’ if written description has ‘system of sensors’ ?
2) Can I use ‘-‘ in general, for example display-controller-apparatus instead of ‘display controller apparatus’ ?
3) How many types of numerals can I use? Besides ‘(a), (b), (c)’, and ‘(i), (ii), (iii)’ can I also use (j), (jj), (jjj)?
4) For defining the material in a dependent claim, is it acceptable to use the format below?

2. The system of claim 1, wherein said probe extension comprises tubes made of materials selected from:
(a) graphite;
(b) carbon;
(c) copper; and
(d) combinations thereof.
Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  replied 11 months ago.
YOU ASK

Questions about previous example.

1) About using ‘-‘ to make reading easier: Can I use ‘sensor-system’ if written description has ‘system of sensors’ ?

ANSWER

Good question. Yes, you could still use the "sensor-system", however, since your written description uses "system of senors" I would use "system of sensors". Such is the best practice.

YOU ASK

2) Can I use ‘-‘ in general, for example display controller-apparatus instead of ‘display controller apparatus’ ?

ANSWER
Yes, you can. Just do not over do using the "-". Many patent drafters never use the "-" but I like it. Such is a Personal preference.

Many English teachers frequently state: " Know Your Audience . . . Before you say it or write it, think about the listener and reader."

Patents are a difficult document to write as there are so many "audiences".

First, one has to draft to comply with patent rules.

Second, one writes for the judge who will be very knowledgeable about patent law.

Third, and perhaps the most important audience, you have to write so that a jury of your piers can understand the patent. And a jury of your piers will have little knowledge of patent rules or how to read a patent.

So I try to use as many tricks as possible so that the average jury member can understand the claims with as little effort as possible.

One "aid" I use is the "-" to make it easier for one to find limitations through out the claims.


YOU ASK

3) How many types of numerals can I use? Besides ‘(a), (b), (c)’, and ‘(i), (ii), (iii)’ can I also use (j), (jj), (jjj)?


You can use as many numerals as you wish. Just remember you want to draft your claims so that a jury of your piers can read and have a chance of understanding them.



YOU STATE
4) For defining the material in a dependent claim, is it acceptable to use the format below?

2. The system of claim 1, wherein said probe extension comprises tubes made of materials selected from:

(a) graphite;
(b) carbon;
(c) copper; and
(d) combinations thereof.


ANSWER
Yes, this claim is OK if the specification supports the claim; except consider "any combination thereof" in place of "combinations thereof".


Also, make sure "comprises tubes" is what you want.

"The system of claim 1, wherein said probe extension comprises tubes made of materials selected from: . . . "

As worded above, the probe extension comprises at least two tubes.





montysimmons, Patent Prosecutor
Satisfied Customers: 233
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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