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[klaviernista]

Recently, a large client indicated that any new application drafted for them should not include the phrase, "such as" without the qualifier, "for example."  That is, in their view a specification reciting, e.g., "The user interface may include commands such as A, B, C . . ." is undesirable, and should read, "The user interface may include commands such as, for example, A, B, C."

Recognizing that the BPAI (or whatever it is called post AIA) has held that the phrase "such as" may be indefinite when used in the claims, I think that following the phrase "such as" with "for example" in the specification is overkill, and makes the specification of a patent application less clear.

Do any of you feel strongly one way or another regarding the use of "such as" or "such as, for example" in the specification?  If so, why?

[JimIvey]

I think that following the phrase "such as" with "for example" in the specification is overkill, and makes the specification of a patent application less clear.

Do any of you feel strongly one way or another regarding the use of "such as" or "such as, for example" in the specification?  If so, why?

I agree with you except that I don't think overkill reduces clarity.  I think the client is wrong, but it's not so important as to fight about it.

Regards.

[klaviernista]

I agree with you except that I don't think overkill reduces clarity.  I think the client is wrong, but it's not so important as to fight about it.

That was the approach I took in my discussion with the in house counsel for this particular client.  I explained my viewpoint, but ultimately told him that I would be happy to do things his way.

[bald & chained]

"The user interface may include commands such as, for example, A, B, C."

That's a lot of hedging in one sentence!  I'd rewrite it as "The user interface may include commands such as, for example, A,B,C, but may also include, for example, only one of the A,B,C commands, any combination/permutation of two or more of the A, B, C commands, or none of the commands at all"

[Dazed-n-confused]

"The user interface may include commands such as, for example, A, B, C."

Let's lard it up:  The user interface may include commands such as, for purposes of providing example only, and without limitation to the foregoing or following...



("Caution: Disclaimer may contain tree nut products, have come into contact with tree nut product containing products, or have been produced on equipment that makes products containing tree nut product containing products.  Tiger did not consume plastic wrap.  The viewpoints expressed herein do not necessarily reflect the views of management, even assuming management has views, a question on which management declines to express any view.")

[klaviernista]

That's a lot of hedging in one sentence! 

Agreed.  Normally I do not use "such as" in the specification, but this particular application made its use worthwhile.

Typically, I say, "As non-limiting examples of X that may be used in accordance with the present disclosure, mention is made of . . . ." 

[JimIvey]

"The user interface may include commands such as, for example, A, B, C."

Well, I never use "may" in that way.  I'd use "can".  And, if the illustrative embodiment does include A, B, and C, I'd say so.

"In this illustrative embodiment, the user interface includes commands A, B, and C.  It should be appreciated that the user interface can include other commands in other embodiments."

To illustrate, consider the Spec later says that, in response of invocation of command A by the user through physical manipulation of one or more user input devices and conventional user interface techniques, the core logic performs an A task.  If the user interface of the illustrative embodiment doesn't necessarily include (rather "implement") command A, such a sentence makes no sense as it presupposes implementation of command A.  So, I say that the user interface does implement command A in this embodiment.

Of course, another way to resolve the potential conflict of requisite elements not being taught to be in any embodiment, you can just modify each and every verb in every sentence with "may or may not" -- thereby gutting the application of any teaching whatsoever.  Honestly, if I were an examiner, I'd be very tempted to reject such an application under 112p1 for failing to teach anything. 

Regards.

[NJ Patent1]

I agree with JimIvey; may is permissive, can is enabling.  Because I can get from NY to DC, doesn't say I can't get there by car (i.e. car is not excluded).  Has to be viewed in light of the entire disclosure.  IMO "such as" is another way for saying "for example".  But I've had clients like that and, if it doesn't otgherwise hurt, I've used such language.  Belts and suspenders?

[klaviernista]

With all due respect to the words "can" and "may," they both have permissive and possessive connotations.  As I see it, there is no hard and fast difference between the terms.  At least not in many contexts.

Consider the following two sentences

1.  "Jack can climb the roof"

2.  "Jack may climb the roof"

In the context of whether or not Jack is capable of climbing the roof, sentence 1 and sentence 2 have the same meaning.  Jack can, or rather he may, climb the roof.

In the context of whether or not Jack will climb the roof, sentence 1 and sentence 2 have the same meaning.  Jack may or may not decide to climb.  Just as he can decide to climb the roof, or not.

As for an examiner rejecting an application under 112(1), I am confident that I could overcome such a position simply by arguing that one of ordinary skill would understand what the application means, despite the use of the term may.     

From www.thefreedictionary.com:

can 1 (kn; kn when unstressed)
aux.v. Past tense could (kd)
1.
a. Used to indicate physical or mental ability: I can carry both suitcases. Can you remember the war?
b. Used to indicate possession of a specified power, right, or privilege: The President can veto congressional bills.
c. Used to indicate possession of a specified capability or skill: I can tune the harpsichord as well as play it.
2.
a. Used to indicate possibility or probability: I wonder if my long lost neighbor can still be alive. Such things can and do happen.
b. Used to indicate that which is permitted, as by conscience or feelings: One can hardly blame you for being upset.
c. Used to indicate probability or possibility under the specified circumstances: They can hardly have intended to do that.

may 1 (m)
aux.v. Past tense might (mt)
1. To be allowed or permitted to: May I take a swim? Yes, you may.
2. Used to indicate a certain measure of likelihood or possibility: It may rain this afternoon.
3. Used to express a desire or fervent wish: Long may he live!
4. Used to express contingency, purpose, or result in clauses introduced by that or so that: expressing ideas so that the average person may understand.
5. To be obliged; must. Used in statutes, deeds, and other legal documents. See Usage Note at can1

[JimIvey]

Consider the following two sentences

1.  "Jack can climb the roof"

2.  "Jack may climb the roof"

In the context of whether or not Jack is capable of climbing the roof, sentence 1 and sentence 2 have the same meaning.  Jack can, or rather he may, climb the roof.

In the context of whether or not Jack will climb the roof, sentence 1 and sentence 2 have the same meaning.  Jack may or may not decide to climb.  Just as he can decide to climb the roof, or not.

I'll respectfully disagree here.

First, consider answer to a question about a car you might buy.  "The car may include air conditioning."  "The car can include air conditioning."  In the former sentence, the answer is more or less "maybe".  In the latter sentence, air conditioning is available (perhaps as an option).

But, more importantly, the "can" or "may" in a patent application typically isn't used with a regular action verb but is instead used with "be" or "include" or some other reflexive (subject defining) verb.

"I may be a large, black woman."  True.  You have no idea who's really typing here.

"I can be a large, black woman."  False.  I'm a large, caucasian man.  Perhaps I can be a woman through gender reassignment surgery, but -- as far as I know -- there is currently no race reassignment surgery.

As for an examiner rejecting an application under 112(1), I am confident that I could overcome such a position simply by arguing that one of ordinary skill would understand what the application means, despite the use of the term may. 

   

To be fair, I said I'd reject if each and every verb was modified with "may or may not".  I may or may not be a registered patent attorney.  What have I just told you?  Nothing.

Second, that particular phrase is telling.  Compare this sentence:  "I can or cannot be a registered patent attorney."  Anything wrong with that sentence?  Or is it equally acceptable to "I may or may not ...."? 

From www.thefreedictionary.com:

can 1 (kn; kn when unstressed)
aux.v. Past tense could (kd)
1.
a. Used to indicate physical or mental ability: I can carry both suitcases. Can you remember the war?
b. Used to indicate possession of a specified power, right, or privilege: The President can veto congressional bills.
c. Used to indicate possession of a specified capability or skill: I can tune the harpsichord as well as play it.
2.
a. Used to indicate possibility or probability: I wonder if my long lost neighbor can still be alive. Such things can and do happen.
b. Used to indicate that which is permitted, as by conscience or feelings: One can hardly blame you for being upset.
c. Used to indicate probability or possibility under the specified circumstances: They can hardly have intended to do that.

See?  Right there as number 1(a).  Indicates ability.

may 1 (m)
aux.v. Past tense might (mt)
1. To be allowed or permitted to: May I take a swim? Yes, you may.
2. Used to indicate a certain measure of likelihood or possibility: It may rain this afternoon.
3. Used to express a desire or fervent wish: Long may he live!
4. Used to express contingency, purpose, or result in clauses introduced by that or so that: expressing ideas so that the average person may understand.
5. To be obliged; must. Used in statutes, deeds, and other legal documents. See Usage Note at can1

Hmmm... where's the indication of ability?  I see permission, likelihood, desire, contingency, and obligation.

FWIW, I think practitioners who use "may" do so to avoid direct description of any embodiments in the fear that any direct descriptions of any embodiments -- i.e., what the embodiment is rather than what it might be -- could be imported into the claims.  In other words, I think the use of "may" rather than "can" is deliberate and is intended to be in the sense of uncertainty, not in the sense of ability. 

I believe that to be a serious mistake.  The spec is required to teach; describing the sorts of things an embodiment might, but might not, be is inadequate in my opinion.

Regards.

[NJ Patent1]

klavernista:  I think the definitions you kindly provided suppoort my point.  Words have denotations and connotations.  The primary meaning (denotation) of can is enabling.  You have to go to the secondary meaning to find "permission".  Concerning "may", IMO only the 5th definition infers enablement.  But I agree that in common usage on the street, any distinction btw can and may has been lost, they are used interchangeably.  Moreover, I'm not aware of any CAFC case in which a claim was held invalid for lack of enablement bcs the spec used "may" rather than "can", or any case in which claims were limited bcs. the specification used can rather than may.  If it works for you ok.  We'll just have to agree to disagree.  I guess my ire w/ may comes from drafting opinion letters (and being traumatized by school teachers).  What the heck is meant with may?  Is applicant/patentee giving my client permission to do what is written?  Or just (successfully) trying to obfuscate claim construction?

[khazzah]

I'm not aware of any CAFC case in which a claim was held invalid for lack of enablement bcs the spec used "may" rather than "can", or any case in which claims were limited bcs. the specification used can rather than may. 

FWIW, I'm not aware of any CAFC case where the can vs. may distinction came up in any context, whatsoever.

 

[Isaac]

Do any of you feel strongly one way or another regarding the use of "such as" or "such as, for example" in the specification?  If so, why?

I feel very strongly that you should let the client have his way about this particular matter.  While I don't believe that the issue would make any difference in the scope of the patent, it is not worth either your time or the client's time to sell the client on your way of handling this issue.

My personal opinion is that such as sufficiently indicates that a non-exhaustive list will follow to people fluent in the English language.   Perhaps, adding extra weasel words can be helpful in some cases if your application is going to be translated into a foreign language.   For example, I've noticed that Korean speakers have problems with subtle language indicating plurality.   If your application is going to be translated into Korean, you may want to take extra care to make sure the intended meaning is expressed more directly.

[NJ Patent1]

Isaac:  Interesting point re: translations.  I bristle when I read a long mealy-mouthed paragraph preceeding the examples in a US application.  As if I never read the case law.  Absent something egregious, examples are never limiting in the US.  You gave me a thought to chew on. May need to reconsider my view.  Thanks! 

[IntelProp007]

Just because there is no case law, does not mean sloppy drafting will never get you into trouble in the future. I have used Ivey's above approach for years. When the day comes that the Federal Circuit does interpret "can" versus "may" in a patent, I can be rest assured that patents issued under my craftsmanship are not in jeopardy.

Also, there is case law that says an applicant must describe what the invention is not what the invention does. Using "may" may cast doubt on whether what is being said "is" the invention.