"including" in specification to "comprising" in claims

[oddtimeflux]

The practitioner who prepared my application preferred using "including" in the specification. He claims that it doesn't have a limiting effect on later drafting claims. Is that true?

[Isaac]

Including and comprising mean the same thing even when used in the claims.

[yapex]

Including and comprising mean the same thing even when used in the claims.

is either considered 'legal phraseology' (eg 'said') that is not acceptable in an abstract?

[JimIvey]

No such thing as "legal phraseology" as far as I know -- at least not as a category of language whose use is restricted in patent applications.  "Said" means "the".  Both "including" and "comprising" are English words and are therefor fully legitimate for use in the Abstract.  The same is true for "said" and "the".

Regards.

[klaviernista]

No such thing as "legal phraseology" as far as I know -- at least not as a category of language whose use is restricted in patent applications.  "Said" means "the".  Both "including" and "comprising" are English words and are therefor fully legitimate for use in the Abstract.  The same is true for "said" and "the".

Regards.

Agreed, but in practice examiner's often object to abstracts that include the term "comprising" (at least in the chemical area).  I typically remove terms like "comprising" or "selected from the group consisting of" from the abstract for this reason.  I have also never seen a case where claim interpretation was determined by how something weas described in the abstract, vs. the specification and claims.

[yapex]

No such thing as "legal phraseology" as far as I know -- at least not as a category of language whose use is restricted in patent applications.  "Said" means "the".  Both "including" and "comprising" are English words and are therefor fully legitimate for use in the Abstract.  The same is true for "said" and "the".

Regards.

Agreed, but in practice examiner's often object to abstracts that include the term "comprising" (at least in the chemical area).  I typically remove terms like "comprising" or "selected from the group consisting of" from the abstract for this reason.  I have also never seen a case where claim interpretation was determined by how something weas described in the abstract, vs. the specification and claims.

MPEP 608.01(b): The abstract should be in narrative form ...  The form and legal phraseology often used in patent claims, such as "means" and "said" should be avoided...  It should avoid using phrases which can be implied, such as, "This disclosure concerns," "The disclosure defined by this invention," "This disclosure describes," etc.

The question was not whether abstract determining claim interpretation.  Allowance of your application may not go smoothly if the abstract does not conform to the MPEP.  For example, a SPE may not allow a case if the abstract contains, for example, "comprising", which is considered legal-phraseology language.  What other words are considered unacceptable in an abstract?

[JimIvey]

Well, yes, of course, whether an Abstract ought to include specific words is a different question.  But there's no law or rule excluding "comprising" from an Abstract -- at least not that I'm aware of.  Since I don't ever use that in an Abstract, I've never looked into the law on that issue.

Note that the MPEP is not authoritative.  It's one editor's summary of the law and rules as the editor understands them.  Note also that the MPEP language quote states what an Abstract "should" or "should not" include.  That's a recommendation, not a requirement, if taken literally as authoritative.

Regards.

[smgsmc]

Hi.  In many applications, I see phrasing in the form:  "In embodiments of the invention, conductors include, *but are not limited to*, copper, aluminum, and iron."   Does the phrase "but are not limited to"  serve any purpose, since "include" is itself non-restrictive.  Is "but are not limited to" strictly paranoid redundancy, or does it squash any future debate (in litigation?) on whether "includes"  is non-restrictive?  I also see the same phrasing added in the form:  "Examples of conductors include, *but are not limited to*, copper, aluminum, and iron."  I've always found this odd, since I don't see how a list of "examples" could be construed as restrictive.  But I've had a couple of in-house attorneys (clients) insist on adding that phrase when they've reviewed my draft.  Thanks.

[klaviernista]

Hi.  In many applications, I see phrasing in the form:  "In embodiments of the invention, conductors include, *but are not limited to*, copper, aluminum, and iron."   Does the phrase "but are not limited to"  serve any purpose, since "include" is itself non-restrictive.  Is "but are not limited to" strictly paranoid redundancy, or does it squash any future debate (in litigation?) on whether "includes"  is non-restrictive?  I also see the same phrasing added in the form:  "Examples of conductors include, *but are not limited to*, copper, aluminum, and iron."  I've always found this odd, since I don't see how a list of "examples" could be construed as restrictive.  But I've had a couple of in-house attorneys (clients) insist on adding that phrase when they've reviewed my draft.  Thanks.

That type of phrasing is included to address claim construction issues that have come up through the years in various Federal Circuit decisions.  For example, there have been cases where, despite the use of the term "comprising" in a claim, the Federal Circuit has nonetheless held that a particular claim element is limited to the specifically identified elements in the specification.  This is particularly true where the specification of the application indicates that the "invention" positively includes a particular element or positively exhibits a particular property.  This is precisely why my firm never uses the term "invention" in the specification of any applications we draft.  Rather, we refer to the "present disclosure." We also never disclose properties or components as absolute characteristics in the specification.  For example, we would much rather state that "in some embodiments of the present disclosure, widget X may exhibit property Y . . ." than "according to the invention, widget X exhibits property Y . . . ." 

It is important to remember that the specification, like an Office Action response, is an argument for the patentability of the claims.  Thus, the specification can give rise to prosecution history estoppel and prosecution disclaimer just as effectively as an argument in a response.  Not to mention that the specification is considered by the courts to be one of the best (if not the best) places to look when considering how to construe claim elements.

[klaviernista]

No such thing as "legal phraseology" as far as I know -- at least not as a category of language whose use is restricted in patent applications.  "Said" means "the".  Both "including" and "comprising" are English words and are therefor fully legitimate for use in the Abstract.  The same is true for "said" and "the".

Regards.

Agreed, but in practice examiner's often object to abstracts that include the term "comprising" (at least in the chemical area).  I typically remove terms like "comprising" or "selected from the group consisting of" from the abstract for this reason.  I have also never seen a case where claim interpretation was determined by how something weas described in the abstract, vs. the specification and claims.

The question was not whether abstract determining claim interpretation.  Allowance of your application may not go smoothly if the abstract does not conform to the MPEP.  For example, a SPE may not allow a case if the abstract contains, for example, "comprising", which is considered legal-phraseology language.  What other words are considered unacceptable in an abstract?

The OP asked if using the term "including" in the specification had any impact on the scope of the claims, relative to comprising.

Other terms that can raise issues in an abstract include, "consisting," "consisting essentially of", and "selected from the group consisting of . . ."

[smgsmc]

  For example, we would much rather state that "in some embodiments of the present disclosure, widget X may exhibit property Y . . ." than "according to the invention, widget X exhibits property Y . . . ." 

From your reading of case law, is there a distinction between, "Examples of conductors include copper, aluminum, and iron."  vs  "Examples of conductors *may* include copper, aluminum, and iron."  Similarly, "In some embodiments of the invention, conductors include copper, aluminum, and iron."  vs  "In some embodiments of the invention, conductors *may* include copper, aluminum, and iron."    You definitely want to avoid, "The invention includes ...", but have there been cases in which a problem crops up if you don't use "may" with "examples" or "some embodiments"?  Is this the same issue as inserting "but are not limited to"?   One client in-house attorney insisted on qualifying practically every verb with "may". 

[klaviernista]

  For example, we would much rather state that "in some embodiments of the present disclosure, widget X may exhibit property Y . . ." than "according to the invention, widget X exhibits property Y . . . ." 

From your reading of case law, is there a distinction between, "Examples of conductors include copper, aluminum, and iron."  vs  "Examples of conductors *may* include copper, aluminum, and iron."  Similarly, "In some embodiments of the invention, conductors include copper, aluminum, and iron."  vs  "In some embodiments of the invention, conductors *may* include copper, aluminum, and iron."    You definitely want to avoid, "The invention includes ...", but have there been cases in which a problem crops up if you don't use "may" with "examples" or "some embodiments"?  Is this the same issue as inserting "but are not limited to"?   One client in-house attorney insisted on qualifying practically every verb with "may". 

Offhand, I am not aware of a case where a court has construed "examples of X includes Y" in the specification as limiting a generic claim to X to only covering Y.  That being said, there are several cases where the recitation of "preferred" examples has limited the claims.  See e.g., Wang Labs Inc., 197 F.3d 1377 (Fed. Cir. 1999); Scimed Life Systems, Inc., 242 F.3d 1337 Fed. Cir. 2001); and Oak Tech., Inc. 248 F.3d 1316 (Fed. Cir. 2001).  Also, in the more recent Alloc case, the court stated that "where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims."  Alloc, 342 F.3d 1361 (Fed. Cir. 2004).

In view of those cases, I try to avoid or at least minimize any characterizing statements in the specification.  That being said, I would not write "examples of conductors may include copper, aluminum, iron . . . ."  Rather, I would write, "As examples of conductors useful in the present disclosure, non-limiting mention is made of . . . or "Non-limiting examples of conductors useful in the present disclosure include . . . .

Also, in my view there is a fine line to be drawn between minimizing potential adverse language in the specification and complying with 112, first paragraph.  One should be careful to avoid the known pitfalls in the caselaw, but one also needs to actually disclose to the public what the invention actually is, not what the invention "might be."

[rmr236]

What I find very confusing is when the specification fails to give mention to any specifics (aka the specification itself is extremely broad; especially with no examples). Is this usually the applicant being 100% certain that the particular limitation is novel and non-obviousness or what? That seems like a very sharp edge between complying with 112(1) and disclosing to the public exactly what your invention is.