Patent and Invention Help Forum

Patent and Inventing Discussion => Patent Questions and Advice => Topic started by: manngraf on March 07, 2020, 11:55:53 AM

Title: What options exist to have two independent patent method claims?
Post by: manngraf on March 07, 2020, 11:55:53 AM
Hi,

and thank you very much Brad for your kind forum and your kind advises, with your kind help I got allowance for my first patent application and trying now to go forward with my second patent application.

I had several independent claims in the original application, and after the restriction requirement, I amended two independent claims into method claims like:

1. A method for generating an electromagnetic signal of ... frequency with modulated amplitude, the method comprising: ...

...

14. A method of ... measurement, the method comprising: ...

with same key idea stated after "whereby" in both independent claims. I traversed to USPTO that if someone introduces this kind of dual band signal from the method of claim 1, it is evident that it is to be used in ... measurement applications as it is written in the claim 14.

I cannot write generic claim that cover both independent claims because some prior art.

I applied for "First Action Interview Program" and now got answer from USPTO that only the first set of independent claims were searched, actually it was rejected on 112, but examiner wrote me the alternatives for the allowance.

I is extremely important for me to have the second independent claim be patented, and I hear about so called "subspaces", rejointment, and additional search (even I am sure that no additional search is needed).

Please, advice me what kind of options are available for me, can I pay for the additional search, or somehow argue that the claims are linked?

Thank you!

Sincerely,

Manngraf
Title: Re: What options exist to have two independent patent method claims?
Post by: Brad on March 08, 2020, 09:57:48 AM
For something like this you really need to speak with the examiner on the phone and explain to him or her what your goals are.   It sounds like you have a good examiner who is willing to help you.    If they cannot find a way to allow both independent claims in the same application you will likely need to file a "divisional" patent application which will be your third patent application and have them run the search in that third application.

This can get expensive (filing 3 separate applications) and maintaining 3 different patent numbers but the advantage is you should have good patent protection on all three different methods.