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[still_learnin]

In a recent thread in the Patent Pros section, pentazole brought up a good point about one of my claims.

My claim set read:

1. An apparatus comprising:
a network interface.
2. The apparatus of claim 1, wherein the network interface comprises an Ethernet interface.

Pentazole questioned my "loose" use of "comprising" in the dependent.

When I first started drafting claims, I wrote instead the more natural sounding "wherein the network interface comprises an Ethernet interface." (Which I think is what pentazole had in mind, though he didn't say it.)

I was told to use "comprising" instead of "is" because comprising is open-ended, and thus broader, and thus better.

But that advice didn't make sense to me in this scenario, where I am narrowing from NOUN-CLASS to NOUN-INSTANCE. Assuming that the instances are mutually exclusive -- that a particular interface cannot be both an Ethernet and a Token Ring interface -- then I don't need the flexibility of open-ended, and "is" is more appropriate.

Comments?

[pentazole]

Hi!  See my reply in the other thread.  using "comprise" to claim an identity is used quite a bit, albeit improperly.  For example, if your network interface is a plug, i.e. a hole with a set geometric shape, then it cannot be both an ethernet plug and a phone plug at the same time, for example.  In addition, even if it is two interfaces at the same time, the type of interface is not going to define your apparatus.  Unless you define it further, it is still going to be a hole with a set geometric shape.

By the time you properly define it, let's say as a circuit board that once operationally active, it can serve as an ethernet interface and something else, then these functions become inherent to the apparatus, and thus claiming them doesn't add any patentable value and may limit you if someone in the future discovers a new interface that is also inherent to your design but you didn't know existed.