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[Art]

I'm curious if it is ok to use the (s) to specify a singular and plural use of an element without going into an involved verbose.

For example,

Is this claim:
1.) An aparatus comprising wheel(s) and engine.

equivalent to this claim ?
1.) An aparatus comprising at least one wheel and an engine.

Is this format beeing used ?

[Isaac]

I don't think the first claim 1 includes an apparatus with only one wheel while the second claim 1 clearly does.

[Art]

In common use of English wheel(s) is one or more wheel.

The USPTO search doesn't let specify (s) a a search option but I found few patents that use this format:

W:\Lptop\ZZZZ Patents\United States Patent 5,742,775.htm    
Claim 14, 58

W:\Lptop\ZZZZ Patents\United States Patent 5,742,775.htm
claim 10, 11, 15

[Art]

Sorry, Here are correct links:

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=/netahtml/srchnum.htm&r=1&f=G&l=50&s1=6,233,566.WKU.&OS=PN/6,233,566&RS=PN/6,233,566

claim 10, 11, 15


http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=/netahtml/srchnum.htm&r=1&f=G&l=50&s1=5,742,775.WKU.&OS=PN/5,742,775&RS=PN/5,742,775

Claim 14, 58

[Isaac]

Somehow when I read the claims I missed the (s).   Sorry about that.

[Wiscagent]

Art asked “if it is ok to use the (s) to specify a singular and plural use of an element without going into an involved verbose.”  Apparently to some examiner(s) is the answer is yes.

Of course anyone drafting a patent application should also be concerned about what happens in court.  And the only way to know that is after several cases have been litigated and appealed.

Patent application writing, and claim drafting in particular, evolves glacially.  Wording, style and format sometime evolve as a result of case law, but why should any particular patent practitioner be a “pioneer” in this area?  The usual advice is to use formats that have worked and have neither caused problems in the patent office nor or in court.

Traditionally, it was accepted in claims that (unless there was a particular reason to believe otherwise in a particular case) reference to a part or item in the singular also encompassed a plurality.  So a claim to:

    A motor comprising a shaft, a gear, and a wire.

would also read on a motor comprising shafts, gears, and wires.  I believe there have been court decisions where NO infringement was found because the allegedly infringing item had more than one of the “singular” parts or steps.  (Perhaps someone can help me with this – I can’t cite specifics.)

From the perspective of the patentee, even if the non-infringement decision was reversed on appeal, the claim wording caused unnecessary difficulties.  If I were writing that trivial claim example, I’d follow the “Don’t mess with success rule.” and write:

    A motor comprising at least one shaft, at least one gear, and at least one wire.


Richard Tanzer

[Isaac]

Traditionally, it was accepted in claims that (unless there was a particular reason to believe otherwise in a particular case) reference to a part or item in the singular also encompassed a plurality.  So a claim to:

     A motor comprising a shaft, a gear, and a wire.

would also read on a motor comprising shafts, gears, and wires.  I believe there have been court decisions where NO infringement was found because the allegedly infringing item had more than one of the “singular” parts or steps.  (Perhaps someone can help me with this – I can’t cite specifics.)

I had thought that there were court decisions holding exactly the opposite.  I can imagine (and seem to vaguely recall) a case where the specification clearly supported only one framastat and reaching the result Wiscagent discusses.  But I would think those cases would be limited to ones where the applicant's invention as described in the specification clearly intended a single shaft.

I have seen instances where patents cite a bunch of boiler plate (e.g. when "a element" is used more than one of the element is implied) that seem to be directed at preventing the narrow interpretation of a gear.

[JimIvey]

My understanding is that of Richard's.  I've heard rumors that "a wheel" in a claim is infringed by one wheel but not by two, but I have yet to see a case stating such.  If there is one (or a current, comprehensive discussion of the issue), I'd love to see it.

From my perspective, it seems completely inconsistent (and almost absurd) to say that Richard's claim:

   A motor comprising a shaft, a gear, and a wire.

would be infringed by a motor including a shaft, a gear, a wire, and a gauge but not a motor including a shaft, a gear, a wire, and another wire.  In other words, it seems absurd that substituting one extraneous element for another would escape infringement.

Since this comes up from time to time with co-counsel insisting on 15 pages of boilerplate, I'd love to see authoritative discussions on the topic.

Regards.

[gregm170]

Good question.  

I've never seen it written as in Example 1 given by Art, so I don't know if it's correct or not.  Any volunteers to try it and see what happens?  

I've seen claims that use the (s); some written by me.  For example, I'll say "at least one wheel" and then refer to it thereafter as "the wheel(s)."  I've also used "one or more wheels" and referred to it thereafter as "the wheel(s)".  Using "the at least one wheel" is awkward and makes me cringe, although it's perfectly acceptable and something I've done in the past.  

I've seen an examiner object to the use of "at least one wheel" and then "the wheel" thereafter.  To overcome this objection, it was changed to "the wheel(s)" and the objection was withdrawn.  It could have been changed to "the at least one wheel" with the same result.  

In Examples 1 and 2, Art is using the open ended transition of "comprising" as opposed to the closed ended transitions of "consisting of" or "consisting essentially of".  

The claim is open ended so it can include other structure.  Hence, if the claim recites "a wheel" and a product has "two wheels," then the claim reads on it because the product has one wheel, plus an extra one.  

Accordingly, I think that infringement would be found in both of Jim's examples.  It has to be or the design around would be trivial.    

Also, in the written description, you should probably state that one wheel is shown here, but in other examples the invention can include two or more wheels and here's why (unicycle, bicycle, tricycle, car, etc.) and this is why's it's advantageous.  This way you support a broader interpretation of your claim.  

Upon rereading my response, why even bother using "at least one" or "one or more" anyways.  It seems unnecessary if the transition is open ended.  

I hope this adds to the discussion.  

Greg L. Martinez
SolidStateIP

www.SolidStatePatents.com

www.SolidStateIP.com

[Isaac]

I've seen an examiner object to the use of "at least one wheel" and then "the wheel" thereafter.  

And well she should!

In Examples 1 and 2, Art is using the open ended transition of "comprising" as opposed to the closed ended transitions of "consisting of" or "consisting essentially of".  

The claim is open ended so it can include other structure.  Hence, if the claim recites "a wheel" and a product has "two wheels," then the claim reads on it because the product has one wheel, plus an extra one.  

Accordingly, I think that infringement would be found in both of Jim's examples.  It has to be or the design around would be trivial.    

I think we all agree that this is the expected, uninformed interpretation.   But several of us are vaguely recalling one or more cases where a differrent result was reached.   I believe it is possible to draft an application in which the specification establishes that the essential part of the invention is the use of a single wheel or shaft where the prior art has used multiple wheels or shafts.   It is possible that a claim in such an application reciting "a wheel" or "one wheel" would read on a unicycle but not a bicycle.

 
Upon rereading my response, why even bother using "at least one" or "one or more" anyways.  It seems unnecessary if the transition is open ended.  

Because some transitions are more open ended than others?   For that matter some closed transitions are not as closed as a simple minded application would suggest.  

When consisting is used, there is a question of what is actually excluded from the claim scope.   If a claim recites a chair consisting of a seat, a back and three legs, is the claim infringed by chair having a coat of varnish or a chair with arms or coasters?  Is it really adding a fourth leg that is outside of the scope of the claim.

[gregm170]

Isaac:  

"And well she should!"  Agreed.  

As to your second point, I agree that it is possible that a claim to "a wheel" or "one wheel" would read on a unicycle but not a bicycle.  But if, in the written description, you state that one wheel is shown here, but in other examples the invention can include two or more wheels and here's why (unicycle, bicycle, tricycle, car, etc.) and this is why's it's advantageous, then you reduce the likliehood of this occuring.  This way you support a broader interpretation of your claim.  

If you claim one wheel and enable one wheel, then someone with two wheels probably doesn't infringe.  I think I might know which cases you are referring to here.  Let me see if I can locate them.  

Greg L. Martinez
SolidStateIP

www.SolidStatePatents.com

www.SolidStateIP.com

[Art]

If I was to attack a patent on a unicycle that has a claim that states:

An aparatus comprising a wheel.

I would say that a bicycle doesn't infringe on the invention of unicycle because it has completely different mode of operation. While unicycle requires a balancing on two axes X and Y, bicycle requires only balancing on one axis X and therefore is different invention due to the mode of operation.  

Of course if the unicycle invention addressed in it's description the issue of axes such an argument would be impossible but this shows how fairly easily one could create a viable case against existing patent if plurality of wheels is not spelled out in the claims even though they are open ended.

[Wiscagent]

I found a reference regarding this singular-plural discussion.  Here’s decision indicating that, under certain circumstances a claim limitation for “a” thing, may not encompass more than one thing.  Norian v. Stryker (Fed. Cir. 2005).

Norian owns a patent directed to kits "for preparing ... bone cements in medical or dental procedures." Claim 8 included the limitation "a sodium phosphate". The circuit court compared the limitation with the indefinite article “a”, to the previous limitation that used the phrase "at least one." Judge Bryson, writing for himself, Newman, and Rader, noted the specification did not discuss any embodiment that included more than one sodium phosphate. Finally, claim eight uses the restrictive term, "consisting of". The C.A.F.C. upheld the claim construction to include only a single sodium phosphate.

The decision also states:  Although the word “a” generally means “one or more” in open-ended claims containing the transitional phrase “comprising,” … that general rule does not apply when the specification or the prosecution history shows that the term was used in its singular sense. … our cases emphasize that ‘a’ or ‘an’ can mean ‘one’ or ‘more than one,’ depending on the context in which the article is used,”…

To me, as a practitioner, the message is clear.  Eliminate ambiguity in a limitation calling for “a” thing.  If you mean “one and only one” write that.  If you mean “at least one” write that.  An alternative would be to invoke claim differentiation and (a) include a claim limitation to “a” thing in an independent claim and (b) have a dependent claim with a limitation for either “more than one” or “only one,” as appropriate.

Richard Tanzer

[Isaac]

In making the effort to wring out of the Norian v. Stryker what the real lesson is, it should noted that the claims in question used the closed transistion term "consisting" and that the use of a closed transistion figured heavily in both the trial court's decision and the CAFC's affirmance.

Also it should be noted that in a claim having an open transistion like "comprising", even providing a number instead of an indefinite article results in an ambiguity about whether an article having a larger number of that element is infringing.

[eric stasik]

Interesting discussion. I think it may be a little bit too focused to look at claim language alone, separate and apart from the specification. Whether or not "wheels" infringes a claim stating "a wheel" seems to me to have a lot to do with the particular invention and how it is described in the specification.

I agree, however, entirely with the sentiment expressed above that one should not pioneer new claim forms.

Regards,

Eric Stasik