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Claims: Trying to make the amount of something matter....

Claims: Trying to make the amount of something matter....
« on: January 28, 2018, 08:27:28 PM »
Hi,
Trying to claim a device using an amount and open space matters. Could any of the follow hypo claims work ?
Thanks.

an apparatus for coloring a rubber cube, comprising:

a open container;

a lid for container;

a rubber cube placed in the bottom of said container;

a coloring means, said means comprises a plurality of paintballs that fits as a unit into the available open space of said container containing said rubber cube leaving little to no open space when said container is closed, wherein ...

or

a coloring means, said means comprises a plurality of paintballs such that the amount of said paintballs fills the available open space of said container containing said rubber cube leaving little to no open space when said container is closed, wherein ...

or

an apparatus for coloring a rubber cube, comprising:

a lid for container;

a rubber cube;

a plurality of at least one paintball surrounding and encapsulating said rubber cube;

a container is of a size to receive and contain the said paintballs and said rubber cube leaving little to no open space remaining inside said container when closed, wherein...



Thanks again for your thoughts.

Brad

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Re: Claims: Trying to make the amount of something matter....
« Reply #1 on: January 29, 2018, 02:29:30 PM »
I assume that having the paintballs take up most of the empty space is a very important part of the invention and helps overcome the prior art?   If not, I would not even try to include that language in my claims.

If it really is a very important part of the invention you could try to first define the empty space of as a "cavity" with a first area (A1) and then after the paintballs are added the cavity size has an area less than A1 but greater than 0.

If you go down that path just make sure you clearly label A1 and 0 in your figures so the examiner can see exactly what you are talking about.

 

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Re: Claims: Trying to make the amount of something matter....
« Reply #2 on: January 31, 2018, 01:06:49 PM »
Thanks Brad for the response and you suggestions. I'm trying to get an important device limitation that is key to the whole invention, but the examiner says "the amount of paintballs do not further limit the claimed container since it does relate to the structure of the claimed apparatus". I'm thinking I'm not using the correct "magic words" yet. My specification and drawings indicate the paintballs completely fills the container and the paintballs are secured from moving around inside the container once the container is closed.
 
While lack of open space and a full container matters, what I need are the paintballs to be immovable:

an amount of paintballs effectively being substantially fixed and immovable when placed inside said container when closed, due to substantially little open space remaining in the closed container and the confinement offered by closed said container;

Is this more straightforward than use of cavity and areas ? thanks again.

Brad

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Re: Claims: Trying to make the amount of something matter....
« Reply #3 on: February 01, 2018, 09:30:02 AM »
If you already filed the application than forget about my cavity and area idea because if those were not labeled at the time you filed the case the examiner will not let you pull those terms into the claims now.

Do you specifically list your container as having paintballs or do you simply say it is configured to hold paintballs?  If the later I understand the examiner's point in that you are not really claiming the paintballs so you may have to re-word your claims to add them as a structural part of your invention but the risk/downside to that is that if someone makes an indentical device but does not sell it with paintballs they may not be directly infringing on your patent.

I would just try to speak with the examiner as much as you can to see if he/her can give you some suggestions or pointers on how to reword the claims.

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Re: Claims: Trying to make the amount of something matter....
« Reply #4 on: February 01, 2018, 01:56:59 PM »
Thanks Brad so much for the help. Have had multiple conversations with the examiner and have requested help per "the Applicant respectfully requests the constructive assistance and suggestions of the Examiner pursuant to M.P.E.P.  § 2173.02 and § 707.07(j)" but to no avail.
 
It sucks that I cannot define a cavity even though it is inherent in a container. The specification states the container is completely filled with paintballs and further states the paintballs are secured from moving due to the amount of paintballs in the closed container.
 
To add the paintballs structurally would this work ?

a closed container enclosing a cube and a plurality of paintballs, said paintballs configured to substantially occupy all of the free space within said container and tightly contained allowing only negligible movement in said container;

Thanks again.

Brad

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Re: Claims: Trying to make the amount of something matter....
« Reply #5 on: February 01, 2018, 04:48:02 PM »
That might be worth a shot if nothing else is working.

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Re: Claims: Trying to make the amount of something matter....
« Reply #6 on: February 01, 2018, 06:39:11 PM »
Thanks Brad for your thoughts.

 

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