49 thoughts on “Bits and Bytes No. 115

  1. If USPTO considers a novel step of invention inadvertently admitted as a prior art in the specification as an “Applicant Admitted prior art”. Please suggest to overcome this rejection.

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  2. The problem with a Jepson type claim is that it particularly points out and distinctly claims the subject matter which the applicant regards as his invention. We all know that doing such an idiotic thing will result in a reduced ability to convince a judge and jury that the proper scope of the claims in our client’s patent on an improvement to local bus addressing in a DEC Rainbow desktop computer is such that anyone using IP addressing owes them a royalty.

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  3. Hey, I like that new revolver — it could save my life if I get to a gun fight, e.g., with an diry rotten infringer!

    Where can I buy a matched pair of 45s?

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  4. Gerontius,I rushed it a bit yesterday. What I should have included is that the inventor is entitled to full faith and credit for setting the technical field and the subjective technical problem. To be fair to the inventor, under EPO-PSA, the range of docs available as D1 is confined to that which is a “realistic starting point” or the “most promising springboard” within that technical field, to address that subjective problem.

    The inventor compromises his/her position, when she/he lets in as D1 a doc from outside this set. Shooting onesself in the foot, in my experience.

    Any thoughts?

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  5. What a great pleasure it is, to find the learned Gerontius commenting on my postings here. Let me see if I can now explain why I wrote what I did and then, if Gerontius is still there, what he has to say in reply.

    It’s the EPO-PSA again. D1 is the “realistic starting point” or “most promising springboard”. G, I had in mind the error of acquiescing to an EPO Exr who selects as D1 a doc that has many structural features in common with the technical feature combination of the claim but which the inventor would nevertheless vehemently deny as a “realistic” starting point from which the PHOSITA would address the OTP.

    Fast forward to opposition proceedings. Your opponent is asserting D2, as the doc to combine with D1 to make something inside the scope of the claim that’s obvious. You defend the claim with the argument that the combination D1 + D2 is not realistic. You fail because, on your own admission in the B publication, you have settled D1 as a realistic starting point.

    Look, I don’t want there to be any disagreement between us. You encourage Americans to be open to 2 part claims in Europe. I would too, but subject to the caveat above. I have been in opposition proceedings with an ill-drafted 2 part claim, both as Opponent and as Proprietor. As Opponent it is great fun but I don’t ever again want to have to defend the validity of a 2 part claim when D1 was not a realistic starting point. Once bitten,, twice shy perhaps but, for me, the experience was scarring.

    Up till now, I had hoped to keep my experience to myself. Now every reader can benefit from it.

    What do you think, Gerontius?

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  6. Never understood Jepson claims.

    Never will.

    Can’t help.

    Can only hurt.

    Why use?

    For that massive Jepson claim repeated above, I’d have written as claim 1 – “A revolver comprising a pawl safety.”

    Or whatever it is.

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  7. Re: As long as they didn’t do Fisimatenten ;-)

    I give up; what does “Fisimatenten” mean?

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  8. Max, it’s Vasistas.
    “Goes back to the time when the German military was marching around in France, and noticing architectural features new to them. 1871, I think.”

    As long as they didn’t do Fisimatenten ;-)

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  9. I had a strange non-standard Jepson claim format presented a few months ago, “the improvement consisting of”. To me the jepson claim format and “consisting of” language don’t mesh well together.

    In my case I had prior art with the base device as claimed, the improvement, and a bunch of other method steps.

    I ended up interpreting the claim both openly (allowing for additional steps) since you could say the other steps aren’t part of inventor’s improvement or whether the other steps are an improvement or not.

    I also interpreted as completely closed and gave reasons why the other steps could be eliminated.

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  10. Another advantage of using a Jepson claim in the above example might be that by putting: “in response to a shooter pulling the hammer in a single action revolver or in response to either pulling the hammer or pulling the trigger in a double action revolver” all in the claim preamble, it might be more likely to avoid some examiner objecting to the claim as allegedly ambiguous or as allegedly covering two different inventions in the same [generic] claim and thus avoiding a restriction?

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  11. In re Lee (Fed. Cir. 1/18/02) mentioned by someone above is one of the most rigid of the former CAFC “TSM Test” decisions that were overuled by the Sup. Ct. KSR decision, so there is no need to pay any more attention to it.
    ———–
    Max, I am being careful to only say “what my European patent agents told me” simply to avoid being accused of making any direct observation on non-U.S. patent law.

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  12. As a European attorney, I just wanted to comment on European practice and to say that I don’t really agree with what MaxDrei has been saying.

    I see no real difference between Jepson claims and Two Part Form claims in the way they’re written or the intention behind them – although novelty is stricly interpreted in Europe such that (as MD says) the “precharacterising portion” should be based on what is known from one and only one disclosure.

    From what people are saying here, the vital difference between Two part form and Jepson is that it is not considered a binding admission on the part of the applicant. There is no general rule of prosecution history estoppel in Europe – certainly not in the UK – so there are no issues about whether a two part form of claim has been properly drafted or not. It is a formal, not a substantive requirement, and is treated as such.

    I cannot see any possible way in which a poorly drafted two part form could cause problems later. You just say, oh, sorry, we made a mistake here, or we interpreted the claim/prior art in a particular way here which is no longer appropriate given the current facts or whatever.

    Also, how can choosing the “wrong” prior art possibly cause subsequent problems? All the two part form says is that document X shows these features and not these features. It really doesn’t matter what document you chose as document X since there is no admission that the features known from X are generally known, only that they are known from that one document. There is therefore no implication at all that these features should be considered known for the purposes of an inventive step attack based on document Y and it is still necessary two show that the combination of document X and document Y would obviously lead to the claimed invention.

    Basically, don’t get stressed AT ALL about two part form in Europe. Just do it if the examiner really insists on it.

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  13. 6, It is a different kind of safety feature, and it also is a functionality improvement — the invention allows a shooter to decock his or her revolver prior to holstering or pocketing and not skip a live round when recocking – thus the Pawl Retainer invention safely maintains full consecutive firepower even if the revolver is decocked one or more times during target practice, hunting or pursuing a criminal or enemy combatant.

    Pretty ingenious if you ask me. And the many disclosed embodiments represent pure mechanical elegance, and the drawings are a work of art.

    The Abstract of the “No-skip recocking revolver” describes it pretty well.
    In a single or double action revolver, an improvement that prevents the cylinder from advancing upon being recocked should the revolver be decocked (uncocked) without firing. During or after decocking, a pawl (hand) retainer may be automatically set or manually set by the shooter. When the retainer is set it prevents the pawl from engaging the cylinder ratchet and rotating the cylinder past a live round when recocked. The retainer may be automatically or manually reset so that the cylinder will advance when the revolver is subsequently recocked.

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  14. American Cowboy, I guess it’s possible, at least conceivable. And of course you could get a District Judge who hates guns.

    However, having rendered the historic Second Amendment Heller decision on June 26, 2008, perhaps the Supreme Court would grant cert just to shoot down the CAFC (pun intended) if it affirmed a lame District Court decision.

    In addition to the apparent strength of these Jepson claims, I don’t believe there is any possible work-around.
    Pretty neat when you think about it. I wish I’d thought of Pawl retaining means to avoid skipping a live round when decocking — a glaring flaw in the hundreds of millions of revolvers manufactured since 1931, and it takes almost 2 centuries to recognize the defect and invent a solution! Will wonders never cease?

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  15. I thought they had “safety” features for revolvers already. As to why we didn’t have the specific one in question, the only answer is probably that the old safety features were fine. Although the approach taken is interesting.

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  16. And then there will be the case where the infringer alleges inequitable conduct because the prosecutor included an item of “prior art” as part of the “improvement,” some befuddled District Court judge agrees, and the FedCir in its wisdom does not find an abuse of discretion by the District Court.

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  17. The two Jepson Revolver Improvement claims posted above on Jun 04, 2009 at 02:48 PM from the patent-of-the-week discussed on this link:

    link to 1201tuesday.com

    seem to be bomb proof, unassailable in litigation. Of course, this is assuming there is no prior art. I can attest to the fact that there is no prior art, this being my field of art.

    Does anybody see any possible weakness in these two claims?

    Also, the question posed above
    “Can anybody explain why it took so long to figure out that improvement for a revolver?”
    Is a good one — anybody have any thoughts?

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  18. Mr Morgan, it’s not just “European agents” who “have said”. The Implementing Regulations under the European Patent Convention do that too. What’s not a given is the judgement of your agent in Europe, in following the European “problem and solution approach” to the analysis of non-obviousness. If the first part of a two part form of claim is drafted carelessly, or built around the “wrong” prior art reference, there’s going to be deep trouble later on, when the claim gets attacked. So, please, make sure you choose as your agent in Europe somebody who is comfortable with the EPO PSA.

    One more thing. In Europe, the case doesn’t get allowed till Applicant “conforms” its specification to fit an allowable claim. So, there’s never any contradiction between what the claim presents as prior art and what the specification teaches as the prior art. No contradiction, so no legal uncertainty, and no need to infer anything from the claim standing alone. I can imagine the European way with 112 appealing to open minds on your side of the Atlantic, sooner or later.

    What about even closer art popping up later, say, after issue. No problem with a competent c-i-t claim in Europe. Might there be a problem with a Jepson, in the USA?

    Upthread, some people are saying that Mr Jepson exposes patentable merit like nothing else can. Thus, what a Jepson and a decently drafted European c-i-t claim do have in common is more “leverage” on validity (both +ve and -ve). Such a claim can be a potent weapon, (not only when its subject is a revolver). But, if you are careless when you draft it, it can come back later to shoot you in the foot (or worse).

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  19. I like Jepson claims, and don’t believe they’re any easier to invalidate than non-Jepson claims. If A and B are prior art, what’s the point of preserving the loser argument that they aren’t prior art? Also, if A and B are prior art, then an examiner will quickly dispose of them and focus on C regardless of the form of the claim. Keep in mind that the preamble of a Jepson claim is contextually limiting, so the Examiner can’t simply identify element C by itself and call the invention obvious, he still has to show why C is an obvious addition to A and B (which, I realize, is all but automatic under KSR, but that’s true for non-Jepson claims as well).

    Lastly, I’d like to hear from an examiner: are you inclined to view Jepson claims more favorably (and perhaps prosecute them more reasonably) or do you prefer applicants to bury their points of novelty among prior art elements?

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  20. I recall a Federal Circuit case several years back that created a disincentive to use Jepson claims or any claims for that matter or text in your specification that could be construed as limiting the scope to “improvement” claims.

    I’ll try to find that case…

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  21. Malcolm, et al. referring to the petition for rehearing — for what it is worth, my answer is yes to the question:

    (1) Whether this Court has erred by “engrafting . . . a separate written description requirement onto section 112, paragraph 1 …. ” Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366, 1380 (Fed. Cir. 2009) (Linn, J., concurring).

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  22. If you’re ever bored and want to see a real piece of prosecution disaster followed by BPAI disaster followed by CAFC disaster check out In Re Lee.

    07631240

    You’ll note here that around 2002 the court (by Newman’s hand) decided that the board erred for not having presented its findings very well. Which, admittedly, it did not. The whole case, from OA’s to briefs to decisions by the authorities are all over the place with no coherent structure imparted to any of the discussion.

    7 years later the exact same references were found to render the now better formatted claims obvious. Who was on the panel? Newman. Along with Gajarsa and DYK. 87 page brief met with a 1 page response from the CAFC. Maybe if Newman had brought her glasses in back in 2002 she could have saved this person 5 years having to wait to have her rule the claims invalid.

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  23. To Answer BleedingPen.

    Yes, the Jepson Admission is equal to a prior art reference that teaches A, B and C.

    Therefore, the examiner only truly has to teach element D and tie it with ABC.

    But the real harm is that Applicant is now forever precluded/barred from ever arguing ABC are new. That is why an attorney has to be careful with Admitted Prior Art.

    Examiners cannot get attorneys to agree on the simplest of matters. For example, I have seen attorney interviews wherein the attorney will not even admit that a ‘search engine’ is prior art.

    The attorney’s have legitimate fear of making assertions of prior art, but it really slows the effeciency of prosecution (i.e. application pendancy). The attorney should know the state of the art well enough to know rudimentary technological advancements within the relevant art. The interviews and prosecution can be tremendously slow if the attorney’s make irrelevant arguments and pretend as if the cited art is total garbage.

    It would make more sense to quote jerry maguire: “help me, help you”. Help the examiner write the Notice of Allowance. Say hey: the prior art is close, it does teach search engines, but it doesn’t teach feature D.

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  24. Speaking of 112, I’m sure Dennis will get to this soon but we may finally see the separate written description requirement get a serious en banc once-over:

    link to patentdocs.org

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  25. I like the concept of Jepson claims. (I’ve never examined one though.) Why? Because it means that the attorney is willing, up front, to indicate what’s important. I can focus my search there, and if it’s a real invention, it makes for a quicker allowance.

    Pretty much every other application has numerous other crap limitations which don’t really get at the invention itself – in the independent claims, it’s limitations directed to things that are clearly prior art, and in the dependent claims, it’s limitations directed to alternate embodiments too similar for an election requirement but that the attorney would never dream of bringing into the independent claim.

    And I have to waste time searching for all of that stuff, when I could be looking for just the important stuff, not finding it, and then calling the attorney with an examiner’s amendment.

    Various people around here kvetch about examiners not working with attorneys to work toward allowance anymore. I’d say at least part of the blame rests with the attorneys, for making every effort to obfuscate the actual invention as much as possible (within the bounds of 112, of course).

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  26. I’ve long thought 112 needs to be beefed up. A lot of apps now a days a have overly broad, ambiguous crappy claims and have a specification that is jut a copy and paste of the claims. Really usefull for promoting the arts and sciences…

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  27. Besides the point noted above, that the CAFC has held that everything in the preamble of of a Jepson clain is admitted to be prior art, there are other problems. Even if the elements listed in the Jepson preamble are individually old, their prior combination may not be.
    Furthermore, European agents have said that if the claim is going to also be filed there that the claim preamble should only include what is actually taught only in one single [the best single] reference, unlike many U.S. Jepson claims.
    The disuse of Jepson claims is unfortunate in the sense that Jepson claims are often the best way to very specifically and clearly indicate what the invention is.
    Even more unfortunate in that sense is the decision of the PTO several years ago to stop rejecting, and to allow, “aggregation” claims, in which the only novel element is buried in a long claim of numerous old and previously combined common elements, even if there is no cooperative or combined effect. That PTO decision has been a major contributor to the current dispute over “damages apportionment”
    [35 USC 112 says that claims must "particularly" point out and "distinctly" claim the invention, but in practice normally only completely or "unresolvably" ambigous claims are found invalid on that basis, and rather rarely.]

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  28. Hi JAOI, I did that deliberately, and it’s kind that you noticed. Some folks around here are sick and tired of my unsolicited ramming of “Europe” down their throats, so I thought I would leave it to my European brothers and sisters to deliver the actual advice. If I can sensitise readers here, to the point that c-i-t is not Jepson, then I’m happy. But you know all this already, no, with your expert EPO counsel having been advising you now for some time.

    BTW, do you know the French word “Le Wasisdass” (don’t rely on my spelling). Some sort of gable end or dormer window, I gather. Goes back to the time when the German military was marching around in France, and noticing architectural features new to them. 1871, I think.

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  29. Hi Max,

    Re;
    “ but only when incompetently drafted, and then for completely different legal reasons.”

    I see the skeleton but no meat on the bones of your comment. What’s up about that?, i.e., vas is los?

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  30. What happens if I mix a jepson claim with a regular apparatus claim in an app?

    e.g.
    Claim 1. In an apparatus having A,B, C, the improvement comprising D;

    Claim 2. An apparatus comprising A, B, C, and D.

    Can the admission of prior art in claim 1 be used against claim 2?

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  31. Mad,

    How is that a different roadmap than a well written reason for allowance by the examiner?

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  32. My dear Malcolm and
    Dear Mr. Mad Prosecutor,

    Firstly, Malcolm, this is how you spell “milquetoasty”.

    Mr. Prosecutor,
    Re: “Right – Jepson claims are a roadmap to invalidity.”

    With all due respect to yuse two guys’ comments above, does it occur to you that it entirely depends on the particular invention being claimed?

    For example, a search on the PTO website, and more importantly for old fashion American six-shooter technology, a search on, for example, advanced advanced advanced Google patent search and elsewhere, produces nothing even close to the Jepson claims I wrote about above.

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  33. I should like to put it on record here, that a European “two part” form of claim and a Jepson claim are not comparable. When your EPO counsel advocates a c-i-t claim, do not suppose that it is open to the same criticism as a Jepson. It is indeed vulnerable, but only when incompetently drafted, and then for completely different legal reasons.

    Just wanted to say, so readers will have the patience to let their European counsel try to explain, and will then listen to the explanation.

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  34. Right – Jepson claims are a roadmap to invalidity.

    “Claim 1 states A, B, and C are old, and the improvement is D. Searcher, concentrate on finding D.”

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  35. ” I believe it is in line with the attorney’s being terrified to admit anything as prior art.”

    It’s not “fear” that leads one to avoid Jepson claims, it’s simply that they are strategically unwise if you want to increase the likelihood that one or more claims will issue that cover “more” than the improvement, or at least appear to cover more.

    Over at 12:01, Fergusen writes “Perhaps it was simply a natural process as new attorneys/agents entered the practice and opted to try claiming more broadly. Or perhaps there was a growing perception that courts were looking with increasing favor at broadly drafted claims. I’m not sure.”

    That is about as milquetoastery as analysis can get. A “natural process”? What is that, like the “new generation” of attorneys had a gene mutation that happened to disfavor Jepson claims?

    Even at the earliest time point in that graph, Jepson claims were not popular. What happened was that as patent prosecution moved from the deep backwaters to the mucky shoreline of legal credibility and seriousness (leading to the creation of the Federal Circuit), relatively skilled and thoughtful patent attorneys began to take patent law more seriously. Although they weren’t the first to reach the moon, they quickly joined the rabble of prosecutors who understood that the game was to file claims that cover everything from the world, on one hand, to some barely understandable thing on the other hand. Then hope that the Examiner is so confused and/or overworked that he/she just throws up his hands and allows it all. And then file a continuation.

    Sure, you can still find attorneys (and jurists) who insist that was convincing to someone in 1870 or 1970 must still be convincing today. There’s probably twenty caveman prosecutors out there who continue to think that “The Federal Circuit never held that Jepson claims were invalid so let’s include some of those. The client will like the variety. Besides, they can’t *all* be means-plus-function claims.”

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  36. Before the days of Admitted Prior Art (APA), I liked to use Jepson claims. But they’re now passe now that APA reigns in both the USPTO and Federal Circuit.

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  37. “http://patentdocs.typepad.com/patent_docs/”

    Petition filed in T v D.

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  38. Derick & Malcolm -

    Watch for a Jepson v. Beauregard post in the near future. The numbers may surprise you..

    -aaron

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  39. ADMISSION OF PRIOR ART

    Attorneys do not like to make Jepson claims because it is a direct assertion that at least one element is prior art. That is why you see claims with elements (A), (B), and (C). Even though everyone in the whole world knows (A) and (B) are known. Attorney refuses to acknowledge such and just writes the application as Claim 1 comprising (A), (B), (C). Instead of a jepson claim that states (A) and (B) are prior art. and C is the improvement.

    The reason for no jepson allowances is because no attorneys file jepson claims. I believe it is in line with the attorney’s being terrified to admit anything as prior art.

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  40. I like Jepson claims. While they certainly do put in record as to what the applicant considers to be prior art, via the preamble, they also clearly delineate what the applicant thinks his invention is.

    Also, perhaps not totally advisable, is the percentage of issued patents that are attempted to be enforced. That is, you have a client who mainly just wants a patent – for that sake alone. They probably will never try to enforce it. In this circumstance, why not do a Jespon claim in order to get a patent quickly?

    (I do note that this isn’t the most cohesive comment I can articulate, just wanted to put my thoughts out there and I don’t have time to make it better.)

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  41. X -

    You’re right. I added an updated chart showing the number of issued Jepson patents as a percentage of the total issuances. It’s pretty startling.

    -aaron

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  42. The change in the number of Jepson claims is even more dramatic when you take into account that almost 2x as many patents issued in 2008 compared to 1990.

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  43. As Pee-Wee Herman used to sing: “Connect the dots! La-la, la-la, la! Connect the dots! La-la, la-la, la!”

    Seriously, it’s a nice graph but what does it mean? Jepson claims, which I agree have some very strong merits, have been “taboo” among practitioners for many years now.

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  44. It is interesting to note that apparatus and 112 (means-plus-function) claims are not mutually exclusive.

    Jepson claims are not based in statute, and are purely a question of form. The examples below are U.S. Patent No. 7,536,817 Aaron R. Feigelson’s wrote about in this article, “Safety for Six-Shooter: Patent of the Week – Part 2” found on this link:

    link to 1201tuesday.com

    This is a Jepson, 35 USC 112 claim:
    1. In a revolver having a hammer, a trigger, a rotating cylinder with chambers therein and ratchet teeth, and a cylinder rotating mechanism including a pawl that engages a ratchet tooth on the cylinder to cause the cylinder to rotate one chamber as the revolver is cocked in response to a shooter pulling the hammer in a single action revolver or in response to either pulling the hammer or pulling the trigger in a double action revolver, an improvement comprising:

    a settable and resettable retaining means — that is set in association with or following a decocking after a first cocking,

    the retaining means — when set preventing the pawl from engaging a cylinder ratchet tooth and rotating the cylinder when the revolver is recocked, and when reset permitting the cylinder to rotate when the revolver is recocked.
    —————————–

    This is a Jepson Apparatus claim:
    8. In a revolver having a hammer, a trigger, a rotating cylinder with chambers therein and ratchet teeth, and a cylinder rotating mechanism including a pawl that engages a ratchet tooth on the cylinder to cause the cylinder to rotate one chamber as the revolver is cocked in response to a shooter pulling the hammer in a single action revolver or in response to either pulling the hammer or pulling the trigger in a double action revolver, an improvement comprising:

    a settable and resettable retainer and an accommodation in the revolver to accommodate the retainer configured to allow the retainer to be set in association with or following a decocking after a first cocking,

    the retainer when set preventing the pawl from engaging a cylinder ratchet tooth and rotating the cylinder when the revolver is recocked, and when reset permitting the cylinder to rotate when the revolver is recocked.
    —————————–

    You gotta love Jepson claims.
    BTW, that’s a really cool invention as claimed.

    Can anybody explain why it took so long to figure out that improvement for a revolver??

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  45. Anyone else realize there is a direct relationship between the use of Jepson claims and allowance rate over the last decade???

    Starting today, all my claims will be Jepson claims, and I expect my allowance rate to skyrocket.

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  46. I second Derick’s request.

    Also I’d like to confirm my suspicion that a graph of the number of Jepson claims *filed* is parallel to the graph shown.

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  47. “The Failed Promise of Innovation in the U.S.
    During the past decade, innovation has stumbled. And that may help explain America’s economic woes.”

    link to businessweek.com

    Reply
  48. Can you do that for computer-readable-medium claims as well?

    Reply

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