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

Fri Sep 26 15:21:12 UTC 2025

Perhaps also cite ABS Global. ABS Global, Inc. v Cytonome/ST (Fed Cir 2023)

From page 9 of the attached opinion:

“use of ‘a’ or ‘an’ before a noun naming an object” requires that the phrase be construed to mean “‘one or more’ unless the context sufficiently indicates otherwise.” Lite-Netics, 60 F.4th at 1345; see Salazar, 64 F.4th at 1315; Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016); Baldwin, 512 F.3d at 1342–43. The court has called this the “general rule,” adding that an exception “only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” Baldwin, 512 F.3d at 1343.
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Friday, September 26, 2025 10:04 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentpractice] Article ("a" "an" or "the") required before "apparatus" in a claim?

EXTERNAL EMAIL
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<mailto: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
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