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montysimmons
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 328
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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In the example below there are three claims. Technical content

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In the example below there are three claims. Technical content is irrelevant.
In claim 3 with upper case words it is applied ‘SAID’ but incorrectly, on purpose. Comments in brackets ‘[]’ have explanations about why ‘SAID’ should not be used in claim 3.
Please find my question at the end of this message after you read the three example claims.

1. A method of measuring a boat, the method comprising the steps of:
Using a first sensor to measure said boat;
measuring said boat by running the boat through the sensor; and
transmitting a data packet upon measuring is completed.

2. The method of claim 1, wherein said measuring step further comprises the steps of:
Using a light signaling device to indicate visually when measurement is in progress; and
Configuring said light signaling device to emit light when said boat is measured.

3. The method of claim 2, wherein SAID STEP OF TRANSMITTING A DATA PACKET further comprises the steps of:

[NOTE: there is no ‘step of transmitting a data packet’ in claim 2, but it is in claim 1.]

Powering down SAID FIRST SENSOR when said light signaling device is emitting light and when engine of said boat is running; and

transmitting SAID DATA PACKET only when SAID FIRST SENSOR is powered up.
[NOTE: there is no ‘first sensor’ and no ‘data packet’ in claim 2, but it is in claim 1.]

QUESTION: is it okay to use the format BELOW for claim 3 in order to be allowed to use ‘SAID’ as shown in claim 3 example above? Could you recommend a better format I could use?

THIS IS WHAT I PLAN TO USE (is this format correct?):
--3. The method of claim 2, wherein SAID STEP OF TRANSMITTING A DATA PACKET is applied in a method of measuring a boat as outlined in claim 1 and SAID STEP OF TRANSMITTING A DATA PACKET comprises the steps of: …..
First, you state:

"[NOTE: there is no ‘step of transmitting a data packet’ in claim 2, but it is in claim 1.]"

COMMENT

That is not exactly true. Claim 2 depends from claim 1, therefor, claim 2 contains all the limitations of claim 1 plus the new limitations of claim 2 (by definition).

Thus, there is a "step of transmitting a data packet" in claim 2 (via claim one).

YOU ASK

THIS IS WHAT I PLAN TO USE (is this format correct?):
--3. The method of claim 2, wherein SAID STEP OF TRANSMITTING A DATA PACKET is applied in a method of measuring a boat as outlined in claim 1 and SAID STEP OF TRANSMITTING A DATA PACKET comprises the steps of: …..

ANSWER

That claim is very awkward and difficult for me to understand. However, if you explain the process well enough in the specification you might get by with it.

I would use the following claim drafting form:


1. A method of measuring a boat, said method comprising the steps of:

configuring a first sensor system to measure the size of a boat and to detect when said boat motor is running;

executing a boat measuring routine when a boat triggers said first sensor system wherein said boat measuring routine generates measurement-data representative of the size of said boat; and

transmitting a data-packet to a remote device wherein said data-packet is a least partially comprised of at least part of said measurement-data.


2. The method of claim 1, wherein said boat measuring routine further comprises the steps of using a light signaling device to generate a first visual signal when a measurement is in progress and configuring said light signaling device to emit a second visual signal when said measurement has ended.

3. The method of claim 2, wherein the step of transmitting a data-packet further comprises the steps of:

powering down said first sensor system when said light signaling device is emitting said second visual signal and when the engine of said boat is running; and

transmitting said data-packet only when said first sensor system is powered up.


Of course, my claiming method depends on the various terms/routines being adequately supported by the written description.

The "first sensor system" will need to be well defined and must support both measuring the size of the boat and determining when the boat's motor is running. Now if the step of determining when the boat motor is running is not performed by the first sensor system, the claim has to change accordingly.


The "boat measuring routine" has to be well defined and support the claimed steps.


"transmitting a data-packet to a remote device wherein said data-packet is a least partially comprised of at least part of said measurement-data."

The reason I use "at least partially comprised of at least part of said measurement-data" is to give you lots of wiggle room.

The claims I drafted my not be right on point as to how your processes work but my claim are an example of how I would draft such claims.











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