tag:blogger.com,1999:blog-6733236595417664807.post2242494469195302804..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: When does "a" mean "the"?Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-6733236595417664807.post-19192877921702532932014-06-05T08:33:24.501-04:002014-06-05T08:33:24.501-04:00Case law and inherency aside, in my experience, I ...Case law and inherency aside, in my experience, I believe many (most?) Examiners would issue a 112 for indefiniteness. More conservative claim constructions<br /><br />(US form)<br /><br />A pencil, having a first end and a second end, comprising:<br /><br />a writing tip on the first end; and<br />an eraser mounted on the second end.<br /><br />(Euro form)<br /><br />A pencil, having a first end and a second end, comprising:<br />a writing tip on the first end;<br />characterized by: an eraser mounted on the second end.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-34190443402339506882014-06-04T17:27:32.514-04:002014-06-04T17:27:32.514-04:00I think it's a bad idea to amend in such cases...I think it's a bad idea to amend in such cases. I've had little trouble getting examiners to back off of these knee-jerk indefiniteness rejections by explaining to them that their proposed change makes the claim <i>less</i> clear. For example, a particular collection of data samples only has one arithmetic mean, so it's perfectly fine to refer to "the arithmetic mean of the data samples," even if you haven't previously referred to it. Referring to "an arithmetic mean of the data samples" suggests that there is more than one, which potentially makes the claim less clear. In the pencil example, referring to "an other end" suggests that there could be more than two ends to your pencil, which is just weird, given everyone's understanding of what a pencil.<br /><br />Back to the cases you mention, I think the examiner in ex parte Qu was right, under the broadest reasonable interpretation of the claims, and the Board was wrong. Likewise, the Board was correct in ex parte Whitney. It's perfectly reasonable to interpret "a number of ..." as referring to any one of several possible numbers. "The number," on the other hand, immediately alerts the reader to the fact that we're talking about a very particular number. If the claim's context doesn't make it crystal clear what that particular number means, then the claim needs to be rewritten.<br /><br />Incidentally, I disagree with the premise that "Claims use 'a' and 'the' in ways that are at odds with plain English usage." The issue you highlight here is that some drafters write ambiguous claims, while some examiners blindly make improper indefiniteness rejections based on an alleged lack of antecedent basis. <br />Danhnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-64820542798517998522014-05-30T23:06:27.758-04:002014-05-30T23:06:27.758-04:00IMO, the claim is not indefinite. It's not sub...IMO, the claim is not indefinite. It's not subject to "two interpretations" -- there is only one "other end." Also, the case law says that "inherent components of elements recited have antecedent basis in the recitation of the components themselves." (MPEP 2173.) A pencil "inherently" has two ends. <br /><br />Nonetheless, plenty of Examiners will reject your claim as indefinite. Amending to "an other end" makes them happy. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-42019347389435625772014-05-30T14:36:40.343-04:002014-05-30T14:36:40.343-04:00Suppose I (in Europe) just invented the pencil tha...Suppose I (in Europe) just invented the pencil that carries its own eraser. Suppose that (in plain English) I Claim:<br /><br />Pencil, characterized by an eraser mounted on the other end of the pencil from its writing tip.<br /><br />Will the USPTO reject the claim as indefinite (no antecedent for "the end")? If so, what is the remedy?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-84481502462092258092014-05-21T11:28:36.409-04:002014-05-21T11:28:36.409-04:00Very nice post, and frustrating, because no matter...Very nice post, and frustrating, because no matter what you write it becomes indefinite.<br />To make "the number" both definite and antecedent, perhaps one can write "a first number of..." to break the plain english use of "a number of". Then, of course, the English will be even more obscure, and the Patentese clearer... Anonymousnoreply@blogger.com