Basic English grammar questions in claim drafting

[Weng Tianxiang]

Hi smgsmc,

Unbelievable that it took a court to decide a point of grammar.

By following the court decision, we can further deduce that "one of A and B" --> "(one of A) AND (one of B) --> both of A and B?"

one of A and B = both of A and B! <--- ridiculous!

I don't think the grammar will have any chance to be added into Webster English Dictionary!

Webster English Dictionary instead of a judge should be used to resolve an English grammar unless the Dictionary has unclear explanation!

Here comes another question:

... if one of following two conditions is true:
a) ...;

b) ...

What is "following two conditions": a) and b) <--- grammar is right from math!

What is "following two conditions": a) or b)   <--- grammar is wrong from math!

Thank you.

Weng

[Weng Tianxiang]

Hi,

I am asking a question about which of my following 2 claim chains is better.

Claim 1: A method of ..., the method comprising:

..., at least one word being latched, ...

Claim 2: The method of claim 1 further comprising pushing a latched word in the at least one latched word into a device 1 if ...

Claim 3: The method of claim 2 further comprising outputting a latched word in the at least one latched word from the device 1 if ...

Claim 4: The method of claim 1 (or claim 3?) further comprising pushing an assistant word into a device 2 if ...

Claim 5: The method of claim 4 further comprising outputting the assistant word in the device 2 if a latched word in the at least one latched word is being output.

Question: Which claim chain is better, claim 1 or claim 3?

Claims 4 and 5 are complete and have no errors if they are based on claim 1.

Claims 4 and 5 are not only complete, but also they fully describes the outputting conditions in claim 3 if they are based on claim 3.

I want to use "of claim 1" instead of "of claim 3", because basing on claim 1 has already had a complete description, no errors and a greater coverage.

Thank you.

Weng

[Weng Tianxiang]

Hi smgsmc,

I have found the paper you want: Conjunctions and-or Patent Claims from Federal Circuit Judgment

http://www.ipwatchdog.com/2013/10/17/conjunctions-andor-patent-claims/id=45733/

I printed the paper and want to make a careful reading over the situation.

This is a paper any claim drafter must read carefully!

Thank you, smgsmc!

Weng

The same patentee ran into the same problem some nine years later in Joao Bock Transaction Systems, LLC v. First National Bank, 2013 WL 3199981 (N.D. Ill., June 24, 2013), involving U.S. Patent No. 6,047,270, entitled "Apparatus and Method for Providing Account Security."  Representative Claim 9 of the '270 patent reads:
A method for providing account security, comprising:
receiving one of a limitation and a restriction on usage of an electronic money account, wherein said one of a limitation and a restriction are received from an account holder;
storing said one of a limitation and a restriction;
processing a transaction on the electronic money account in conjunction with said one of a limitation and a restriction; and
generating a first signal, wherein said first signal contains information for one of approving and disapproving the transaction.
(Emphasis added.)

During the Markman hearing, the patentee, relying on Sleepy Hollow, argued that the disputed phrase, "one of A, B, and C means "only A or only B or only C."  The defendant, however, argued that Sleepy Hollow was inapplicable because the term in that case was distinguishable ("at least one of A, B, and C" versus "one of A, B and C"), and that the phrase should be read according to its plain meaning.  Thus, the defendant proffered that "one of A, B, and C" means "one A, one B and one C."  While recognizing that English grammar demanded defendant's interpretation of the disputed phrase, the court reasoned that such "plain meaning" would render the claims senseless.  Thus, the court concluded the phrase, "one of ... and ..." means "'one or more of the items in the list' or 'either or both of the items in the list.'" Like Sleepy Hollow, the court found guidance in the specification of the patent-in-suit: "It is clear from the specification that Joao Bock intended the words 'limitation' and 'restriction' to be used interchangeably. Particularly persuasive is the fact that the two words are separated frequently by the article 'and/or.'"

Given the problems that may arise when a practitioner uses "and" or "or", is it safe just to forget grammar, hedge one's bets and simply use "and/or" in the hopes that a district court (and even maybe the Federal Circuit) will save the day!?  After all, District Court Judge Colleen McMahon stated it nicely:

"One of the things I have learned in my brief but intensive introduction to patent law is that plain English grammar and syntax are not always endorsed by either patent examiners or courts interpreting patents. ... So I accept the proposition that it is perfectly proper to ignore English grammar and syntax when interpreting patent claim language – at least, when context renders a different reading more sensible."

Sleepy Hollow at **11-12.  This is, no doubt, an interesting question.  We think the right answer is probably "no"!

In the law in general, the use of the conjunction/disjunction (i.e., "and/or" and even "or/and") has been widely criticized as a "freakish fad," an "accuracy-destroying symbol," and "meaningless."  A Wisconsin Supreme Court opinion referred to the "and/or" construction as "the child of a brain of someone too lazy or too dull to know what he did mean."  Employers Mutual Liability Insurance Co. v. Tollefson, 263 N.W. 376, 377 (1935).  Moreover, the Florida Supreme Court has held that use of "and/or" results in a nullity, stating:

We take our position with that distinguished company of lawyers who have condemned its use. It is one of those inexcusable barbarisms which were sired by indolence and damned by indifference, and has no more place in legal terminology than the vernacular of Uncle Remus has in Holy Writ. I am unable to divine how such senseless jargon becomes current. The coiner of it certainly had no appreciation for terse and concise law English.

Cochrane v. Fla. E. Coast Rwy. Co., 145 So. 217 (1932).  Wow!

So have many patent practitioners been guilty of such "inexcusable barbarisms"?  To be sure, we looked at the USPTO database and found a not insignificant amount of use of the "and/or" construct – about 5% of issued utility patents since 1976 and about 10% of published utility applications since 2001!  We even found a surprising number of uses of the "or/and" construct. (See the accompanying infographic.  Admittedly, some – perhaps small – percentage of these claims probably refer to compound logic gates, but you get the point!)

[Weng Tianxiang]

Hi,

"Logic" is an uncountable noun, and I found that Microsoft WORD picks my word "at least one combinational logic" as an error.

Here is what I have written:
1. A combinational logic;

2. The at least one combinational logic.

Now I want to change it as follows:

1. A piece of combinational logic;

2. The at least one piece of combinational logic;

Is the correction acceptable?

Another English grammar puzzle for me is:

I see "claim drafting" and "claims drafting", I don't know which is right?

Here is another example:

"Claim dependence" vs. "Claims dependence"

Thank you.

Weng

[smgsmc]

I see "claim drafting" and "claims drafting", I don't know which is right?

These two are interchangeable; equally correct.

Here is another example:
"Claim dependence" vs. "Claims dependence"

The proper choice will depend on the context.

[Weng Tianxiang]

Hi smgsmc,

I see "claim drafting" and "claims drafting", I don't know which is right?

These two are interchangeable; equally correct.

Here is another example:
"Claim dependence" vs. "Claims dependence"

The proper choice will depend on the context.

Is there any grammar rule that says both in a) are correct or one of them in b) is correct?

Having English as a second language, many sentences puzzle me.

Here I have another example:

... something that is ...

... somethings that are ...  <-- I found this in this website. How can that becomes plural.

Thank you.

Weng

[smgsmc]

Hi smgsmc,

I see "claim drafting" and "claims drafting", I don't know which is right?

These two are interchangeable; equally correct.

Here is another example:
"Claim dependence" vs. "Claims dependence"

The proper choice will depend on the context.

Is there any grammar rule that says both in a) are correct or one of them in b) is correct?

Having English as a second language, many sentences puzzle me.

Here I have another example:

... something that is ...

... somethings that are ...  <-- I found this in this website. How can that becomes plural.

Thank you.

Weng

No hard grammar rules for your original (a) and (b).  "Claim" and "claims" are used as noun modifiers, an inherently fuzzy category.

With respect to your new example, "that" is used as a relative pronoun and can be singular or plural.  See

http://www.getitwriteonline.com/archive/110805verbsagreerelpro.htm

[Weng Tianxiang]

Hi smgsmc,

Actually I always treat "that" as a single form, because I know that plural form of that is those.

It is really difficult for a person who has English as his second language and is not educated in the US to become a qualified licensed patent attorney!

So I have really asked many basic questions for which I have been wrong!

Thank you very much, very much.

Weng

[smgsmc]

Actually I always treat "that" as a single form, because I know that plural form of that is those.

When "that" is used as a demonstrative adjective or demonstrative pronoun, the plural is "those"  [That girl is pretty.  Those girls are beautiful.  That is made of aluminum.  Those are made of titanium. ]  When "that" is used as a relative pronoun (as in your examples above), the plural is "that".

[Weng Tianxiang]

Hi smgsmc，

Now I learn English mostly by example sentences, not by grammar language, like you demonstrate.

Thank you.

Weng

[smgsmc]

Hi,

I am asking a question about which of my following 2 claim chains is better.

Claim 1: A method of ..., the method comprising:

..., at least one word being latched, ...

Claim 2: The method of claim 1 further comprising pushing a latched word in the at least one latched word into a device 1 if ...

Claim 3: The method of claim 2 further comprising outputting a latched word in the at least one latched word from the device 1 if ...

Claim 4: The method of claim 1 (or claim 3?) further comprising pushing an assistant word into a device 2 if ...

Claim 5: The method of claim 4 further comprising outputting the assistant word in the device 2 if a latched word in the at least one latched word is being output.

Question: Which claim chain is better, claim 1 or claim 3?

Claims 4 and 5 are complete and have no errors if they are based on claim 1.

Claims 4 and 5 are not only complete, but also they fully describes the outputting conditions in claim 3 if they are based on claim 3.

I want to use "of claim 1" instead of "of claim 3", because basing on claim 1 has already had a complete description, no errors and a greater coverage.

Thank you.

Weng

If you want to maintain maximum scope for claims 4 and 5, and if claims 4 and 5 do not require the limitations of claim 3, then you want claim 4 to depend on claim 1.  Of course, if the particular embodiments are important to you, and depending on the amount of excess claims fees (if any) that you are willing to pay for, you can have one set of claims 4 and 5 depend on claim 1 and another set of claims (call them claims 6 and 7) depend on claim 3.

[Weng Tianxiang]

Hi smgsmc,

Of course, if the particular embodiments are important to you, and depending on the amount of excess claims fees (if any) that you are willing to pay for, you can have one set of claims 4 and 5 depend on claim 1 and another set of claims (call them claims 6 and 7) depend on claim 3.

Good idea!

Now my NPA has 3/50 claims and I don't want any more claims, and I will use the largest coverage method to base claim 4 on claim 1.

Thank you.

Weng

[Weng Tianxiang]

Hi,

Here is a new English grammar question:

I see both n-bit and n-bits expressions in books and websites.

Which is correct?

Thank you.

Weng

[smgsmc]

Hi,

Here is a new English grammar question:

I see both n-bit and n-bits expressions in books and websites.

Which is correct?

Thank you.

Weng

Depends on context and on the part-of-speech.  I would use

An n-bit register is used as an input buffer.

but

The register holds n-bits.

[Robert K S]

American usage is "n-bit".  "n-bits" may be used in some other countries (e.g., India, perhaps).

Note that the hyphenated form "n-bit" is adjectival.  When using as a noun there should be no hyphen: an n-bit register holds n bits.