"one of A and B" = "A or B"?
Jacob Dunlap
While checking patents translated by other translators in my office (native
speakers of Japanese), I often come across the phrase "one of A and B" used
as a translation of 「Ａ及びＢのいずれか」, particularly in the claims.
Common sense tells me that "A or B" would be a sufficient and far more
natural translation, but I was wondering if there is some sort of precedent
in the patent world that would make "one of A and B" more appropriate. Any
opinions you may have on this would be greatly appreciated.
Thank you,
Jacob Dunlap
Alan Siegrist
> While checking patents translated by other translators in my office
> (native speakers of Japanese), I often come across the phrase "one of A
> and B" used as a translation of 「Ａ及びＢのいずれか」, particularly in
the
> claims.
> Common sense tells me that "A or B" would be a sufficient and far more
> natural translation, but I was wondering if there is some sort of
> precedent in the patent world that would make "one of A and B" more
> appropriate.
Yes, there certainly is patent precedent on this subject.
Let me quote from _Patent Applications Handbook_ by Stephen A. Becker, §
2.02[1][e]:
==Begin Quote==
[e] A Claim must be Definite
...
There are several general rules of claim construction that, if
followed, will help insure claim definiteness.
Alternative language. It is ordinarily improper to use alternative
language in a claim. For example, it would be improper to recite "a clamp or
lock for securing the lid of a receptacle closed." The examiner will not
examine two distinct embodiments of the invention as a single claim. It is
acceptable to refer to a generic term, or to use functional language (a
"means" for securing a lid closed), and then specify the clamp and lock in
two dependent claims.
On the other hand, some forms of alternate language are acceptable
because they simply refer to the same article using two different names and
thus do not render the claim indefinite. An example is "range or stove."
However, the alternative expression "stove or the like" is inherently
indefinite.
==End Quote==
I tend to think that merely rephrasing "A or B" as "one of A and B" would
not be sufficient to avoid the prohibition against indefinite claims. It
sounds like poor claim drafting practice to me. But as translators, there is
little that we can do about that except give the client advice.
Regards,
Alan Siegrist
Orinda, CA, USA
<AlanFS...@comcast.net>
James Sparks
> While checking patents translated by other translators in my office (native
> speakers of Japanese), I often come across the phrase "one of A and B" used
> as a translation of 「Ａ及びＢのいずれか」, particularly in the claims.
> Common sense tells me that "A or B" would be a sufficient and far more
> natural translation, but I was wondering if there is some sort of precedent
> in the patent world that would make "one of A and B" more appropriate.
Alan has given you a good quote, but it refers to writing a patent in
English, not to translating what is already written in Japanese.
I don't think there is anything wrong with changing this as you
suggest, and in fact I do it all the time. I have three reasons for this.
1) "One of A and B" is ambiguous, while the Japanese is not. On a
purely logical level, "one of A and B" could mean "one of the plurality
of A's, plus B." The Japanese meaning, however, is clearly that of
selecting either A or B.
2) The Japanese Ａ及びＢのいずれか sounds perfectly fine. This may be
because the concept of "or" has traditionally not been as clearly
defined in Japanese as in Western languages, although this situation has
changed considerably in recent decades. For some reason, Ａ及びＢのいず
れか sounds more precise than ＡまたはＢ or some other form. On the
other hand, "one of A and B" sounds somewhat odd in English. There is
therefore a change in register from the source to the target.
3) Even if one disputes 1) above, and says that "one of A and B" is
exactly equal to Ａ及びＢのいずれか, then I would argue that it must
therefore also be equal to "A or B," since the latter is equivalent to
the Japanese, so there should be no problem using the more
natural-sounding version.
When I come across the above form, I usually use the word "either," as
in "either A or B." This seems to me to match the original quite well,
both in meaning and in register.
We should not be slaves to the original in patent translations, since
conjunctions are not used in exactly the same way in J and E. For
instance, just today I translated 図１４または図１５に示すように as "as
seen in FIGS. 14 and 15," since that sounds more natural to me in
English. Both ways are logical, since it can be seen in FIG. 14, or in
FIG. 15, or in both FIG. 14 and FIG. 15.
James Sparks
Friedemann Horn
> Let me quote from _Patent Applications Handbook_ by Stephen A. Becker, §
> 2.02[1][e]:
> ==Begin Quote==
> [e] A Claim must be Definite
> ...
> There are several general rules of claim construction that, if
> followed, will help insure claim definiteness.
> Alternative language. It is ordinarily improper to use alternative
> language in a claim. For example, it would be improper to recite "a clamp or
> lock for securing the lid of a receptacle closed." The examiner will not
> examine two distinct embodiments of the invention as a single claim. It is
> acceptable to refer to a generic term, or to use functional language (a
> "means" for securing a lid closed), and then specify the clamp and lock in
> two dependent claims.
Well yes, BUT:
The general idea here appears(*) to be that you have to make up your mind:
does your device secure the lid with a clamp? Or with a lock? If you
were allowed to
claim the two embodiments in a single claim, then, by extension, you
should also be allowed to write a single claim directed at "a lawnmower
comprising A + B + C ... or an image forming device comprising D + E + F."
However, there may well be cirumstances when you are not trying to
hide two alternatives behind the "or" but the alternative nature is inherent
to the claim. To give an example:
1. An intruder warning system comprising a first sensor, a second sensor and
a controller, wherein the controller causes an alarm to go off when the
controller receives an intruder alert signal from the first sensor *or* the
second sensor...
I don't think there is anything indefinite about this language.
So I think the statement "alternative language is improper because it
will make the claim indefinite" is basically nonsense (although I concede
that S. Becker qualified this statement with "ordinarily"). Single words per se,
in particular innocuous ones like "or", "which" etc. don't make a claim
indefinite or improper. It depends on the way you use them in context.
But of course it is much easier to declare words like this "evil" and
ban them from all claims, which is precisely what many Japanese
patent law firms do.
(*) By the way, I don't agree with S. Becker that the example he
gives makes the claim indefinite. If the lid can be closed by either
a clamp or a lock and that's what you claim, then fine, what's ambiguous about
this language? If both configurations are two aspects of one inventive
concept, then there is unity of invention. And if there is no problem
regarding the scope or clarity of the claim, then there shouldn't be a
problem.
But I do realize that for some reason a Markush group ("one selected
from the group consisting of clamps and locks") is preferred in such
cases under US practice.
BTW, I've also heard the theory that "A or B" is inherently ambiguous
because it is unclear whether it means "either A or B" (i.e. XOR)
or "A or B or both" (i.e. OR). But I don't find that very convincing either,
because which of the two is meant is often very clear from the context.
More about alternative language in the MPEP:
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_h.htm
"Alternative expressions using "or" are acceptable, such as "wherein R
is A, B, C, or D." The following phrases were each held to be
acceptable and not in violation of 35 U.S.C. 112, second paragraph in
In re Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975): "made entirely
or in part of"; "at least one piece"; and "iron, steel or any other
magnetic material."
Friedemann Horn
www.horn-uchida.jp
Jacob Dunlap
insightful comments -- they are much appreciated. I'm going to forward the
thread along to my coworkers this morning.
Thanks again,
Jacob Dunlap