Indefinite Articles...

[WARREN SMITH]

https://www.finnegan.com/en/insights/blogs/prosecution-first/supremely-confusing-on-that-complex-word-a-is-it-only-one-or-is-it-one-or-more.html

 

"Although not a patent case, the Supreme Court recently analyzed whether the use of “a” indicated one or “at least one.” In Niz-Chavez v. Garland, 593 U.S. ___ (2021), a majority of the Court, in a 5-3 decision, held that “a” meant “one.”"

 

Ouch. This can have an impact on J-E legal translation practice, where the common practice is to use "a" the first time an element shows up (unless there is very good reason to infer that there is a plurality of the element). 

 

W

 

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2173.05(e) Lack of Antecedent Basis [R-08.2017]

A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014). The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the recitation of “said lever” in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. A claim which refers to “said aluminum lever,” but recites only “a lever” earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Ex parte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992) (“controlled stream of fluid” provided reasonable antecedent basis for “the controlled fluid”). Inherent components of elements recited have antecedent basis in the recitation of the components themselves. For example, the limitation “the outer surface of said sphere” would not require an antecedent recitation that the sphere has an outer surface. See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359, 61 USPQ2d 1216, 1218-19 (Fed. Cir 2001) (holding that recitation of “an ellipse” provided antecedent basis for “an ellipse having a major diameter” because “[t]here can be no dispute that mathematically an inherent characteristic of an ellipse is a major diameter”).