[Patentpractice] Article ("a" "an" or "the") required before "apparatus" in a claim?

David Boundy DavidBoundyEsq at gmail.com
Fri Sep 26 15:04:17 UTC 2025 

The examiner is wrong.  I often use either no article or multiple "a" when
i've got a computer network invention, and there are multiple tasks.  I do
not want my claim to say that all steps must necessarily be performed on
one and the same computer.  I use these quotes from the MPEP regularly, and
here's form language I use regularly.  The question is whether there's some
larger stakes to fight for, or whether the best response is to just roll
for it.  If it's the only amendment you;d make, then I would resist making
the amendment, to make it harder for the next action to be final.

*2173.**04  Breadth Is Not Indefiniteness*

Breadth of a claim is not to be equated with indefi­niteness. *In re Miller*,
441 F.2d 689, 169 USPQ 597 (CCPA 1971). If the scope of the subject matter
embraced by the claims is clear, and if applicants have not otherwise
indicated that they intend the invention to be of a scope different from
that defined in the claims, then the claims comply with 35 U.S.C. § 112,
second paragraph.


*2173.02 Clarity and Precision*

The examiner’s focus during examination of claims for compliance with the
requirement for definiteness of 35 U.S.C. 112, second paragraph, is whether
the claim meets the threshold requirements of clarity and precision, not
whether more suitable language or modes of expression are available. …  he
or she should allow claims which define the patentable subject matter with
a *reasonable* degree of particularity and distinctness. *Some latitude in
the manner of expression and the aptness of terms should be permitted even
though the claim language is not as precise as the examiner might desire.
Examiners … should not reject claims or insist on their own preferences* if
other modes of expression selected by applicants satisfy the statutory
requirement.

            In a case where pedantic conformance to “antecedent basis” was
the only reason to question definiteness, the Federal Circuit squarely
rejected “antecedent basis” as a controlling principle.  The Federal
Circuit made clear that indefiniteness turns on consideration of
surrounding claim language, the specification, and the knowledge of those
in the art, to identify substantive indefiniteness, not rules of form:

When the meaning of the claim would reasonably be understood by persons of
ordinary skill when read in light of the specification, the claim is not
subject to invalidity upon departure from the protocol of "antecedent
basis."  *Energizer Holdings, Inc. v Int’l Trade Comm’n*, 435 F.3d 1366,
1370, 77 USPQ2d 1625, 1628 (Fed. Cir. 2006).

            The MPEP teaches the same.  MPEP § 2173.05, by its terms,
applies only to statutory indefiniteness, but gives valuable advice here.  MPEP
§ 2173.05(e) instructs that mere lack of antecedent basis “does not always
render a claim indefinite.”  Rather, an Action *must in addition* show “it
would be unclear as to what element the limitation was making reference.”   The
examples given in MPEP § 2173.05(e) all require that there be two of
something, and that the claim language be ambiguous as to which of the two
is being referred to, or some similar *ambiguity*.  No such showing exists
in the Action.  MPEP § 2173.05(e) cautions that no rejection should be
raised when “the scope of a claim would be reasonably ascertainable by
those skilled in the art.”  MPEP § 2173.02(II) cautions that “Examiners
should note that Office policy is not to employ *per se *rules to make
technical rejections.”  *See also * *Evolusion Concepts, Inc. v. HOC
Events, Inc.*, 22 F.4th 1361 (Fed. Cir. 2022) (departure from strict
"antecedent basis" is not indefinite).

            The Action makes no showing that the scope of any of the
objected-to claims is anything other than “reasonably ascertainable.”  Without
that explanation, it’s impossible to know whether there’s a real problem,
let alone what the appropriate cure would be.


On Fri, Sep 26, 2025 at 10:38 AM George Jakobsche via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> An examiner objected to a claim like the following (emphasis added):
>
>
>
> A doohickie comprising:
>
>    *XYZ apparatus* that defines a volume and comprises:
>
>         a port in fluid communication with the volume;
>
>         ... ; and
>
>    a ABC disposed directly below the XYZ apparatus ...
>
>
>
> The examiner asserts “XYZ apparatus” requires a leading indefinite
> article, i.e., “a”. This seems like a relatively minor point, but it seems
> to me that “apparatus” here refers collectively to its components (as
> recited after its “comprising”). If so, “apparatus” is * uncountable*
> and, therefore, does not take an indefinite article before it, as discussed
> here
> <https://www.butte.edu/departments/cas/tipsheets/grammar/articles.html>
> and here
> <https://usingaborrowedlanguage.wordpress.com/2014/02/11/apparatus/>.
>
>
>
> Are there any grammarians on this list who can opine on necessity of an
> indefinite article before “apparatus” in the subject claim?
>
>
>
> Situations like this make me wish I still had access to my nineth grade
> English teacher (Mrs. Pollard), who I sorely underappreciated at the time.
>
>
>
> Best regards,
>
> George
>
> George Jakobsche Patent Counsel PLLC
>
> 39 Old Farm Road, Concord, MA 01742-5234
>
> George at JakobscheLaw.com | +1-978-245-8100
>
>
>
> This e-mail is from George Jakobsche Patent Counsel PLLC, a law firm, and
> it may contain confidential or privileged information. If you are not the
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