“Substantially” is not of itself fatal to a claim; indeed, it must always be implied in every claim, even when not introduced, and adds nothing when it is. Were this not true, few patents could give any protection, for some departures from the precise disclosure are nearly always possible without losing the benefit of the invention.
Musher Found. v. Alba Trading Co., 150 F.2d 885, 889 (2d Cir. 1945) (L. Hand, J.)
It seems to me that everything that Judge Learned Hand said about “substantially” applies with equal force to “about” in the context of a numerical limitation.
7.1
Greg, that fits perfectly with the jurisprudence of the courts of England that I learned 40 odd years ago. What a great cite. Are not “about” and “approximately” and “substantially” all pretty much “more or less” the same thing? If not, how do they differ?
Remains to be seen what others here make of your citation.
7.1.1
Did you bother (at all) with Greg’s more recent citation?
6
Yes, surely they are different.
MaxDrei gives the EPO stance: “about”, without qualification, is indefinite.
I think he’s right that the USPTO should also consider it indefinite if used without qualification – after all, what does “about 4” mean? – 3.9-4.1, 3.6-4.4, somewhere between 1 and 10?
But if you’re going to qualify/define it (e.g., “‘about’ means within 10%”), then you don’t need “about”, you can just write what you have defined, such as 3.6-4.4 instead of about 4.
The next question is “‘0.1%’ versus ‘0.10%’ – is there a difference?”
And I’d say again, yes, surely they are different.
6.1
Derek,
See the case that Greg provided (but not just his take-away).
5
By definition, “about” modifies whatever .1 means so it adds a penumbra of uncertainty, in context or without it and by reference to a particular specification or more generally. How broad that penumbra is is a different matter….
5.1
No question, “about” adds a penumbra of uncertainty.
Does it add such a penumbra of uncertainty that a claim to “about .1%” is indefinite? – that’s the claim validity question.
Does it add such a penumbra of uncertainty that the claim catches an infringer operating at, say, 0.8% – that’s the infringement question.
Where would you rather risk your problem?
5.2
Still not convinced that “about” always adds a penumbra of uncertainty. Does it not alwys depend on context? I mean, what if I write that 1% of domestic cats have green eyes. Does it make any difference if I write that about 1% have geeen eyes?
Or consider a claim to a process of producing a commercial continuous cast alloy composition, which specifies 1% by weight of a particulate nuclating agent. Given the vagaries of commercial production of alloy compositions, the amount you will find in any given end product sample is never going to be exactly 1%. That much is implicit to every skilled reader of the claim. Adding “about” to the language of the claim makes no difference because it doesn’t alter the target amount of !% specified to the alloy casters. Rather, whether or not to add “about” is nothing more than the personal choice of the individual claim drafter.
5.2.1
As to “Rather, whether or not to add “about” is nothing more than the personal choice of the individual claim drafter.”
That would be a No (leastwise here in the States).
5.2.2
Max:
While I agree with you about your cats with green eyes example, no difference, that’s irrelevant to the discussion – we’re talking about patent claims and the statutory and judge-made rules governing their interpretation and not conversation.
And, as Anon says, “that would be a No” in the US.
5.2.2.1
Indeed. Derek, I’m (more or less) retired so I can indulge myself with thoughts of what the law ought to be as opposed to what it is.
New decisions of each of the Supreme Court in England, and the Enlarged Board of Appeal at the EPO, and SCOTUS in the USA, never cease to surprise me and so I post to “America’s leading patent law blog” in the (perhaps illusionary) thought that what gets posted here will have an effect on the progress of the jurisprudence.
So I’m not 100% convinced that what I write here is “irrelevant”.
OK, that would be , today, a “No”. But who cares about today? Patent attorneys drafting patent applications care about what the courts will decide 10, or 20, years on from today.
See #7, from Greg. What goes around comes around, oder?
5.2.2.1.1
Your “indulgences” have been noted.
Who cares, indeed.
5.3
Does “adds a penumbra of uncertainty” translate to academic speak for “I don’t like it”….?
Or do you think that ANY language carries absolute certainty?
5.3.1
I guess it can also depend on the country you are prosecuting in, and the official language. Also, some terms do not translate as well as others. An examiner in China rejected a claim because the claim used “generally” (as in “generally vertical”) and that made the claim unclear/indefinite.
I believe that most practitioners view “about” as another way of saying “more or less.” I think viewpoint has a lot to do with how your mentors taught you, and you were taught your claim drafting skills. When I first started out as an associate, I wrote “about vertical” in a claim, but the partner reviewing my work wanted it changed to “generally vertical”. His view was that “about vertical” implied rotation about the vertical axis. After that, whenever I drafted claims involving vertical or horizontal orientation, I would used “generally” in front of horizontal or vertical.
4
The exact value is vulnerable to 112(a) because of measurement uncertainty. The approximate is vulnerable to 112(b). It would be interesting to see what the factfinder would do with “the average value approaches x% in the limit as the number of measurements increases.”
4.1
Don,
The “average value” line appears to be the rejected thinking in the case that Greg provided.
3
At a minimum, the difference between the two is that by including “about” in the claim, the patentee cannot argue doctrine-of-equivalents on this limitation. Cohesive Tech. v. Waters Corp., 543 F.3d 1351, 1372 (Fed. Cir. 2008).
3.1
Heh. The issue of whether a claim element modified by “about” could be infringed under the doctrine of equivalents was one of the issues on my plate when I left private practice for in-house telecom work in August 2008. Had I waited . . .
3.2
A partial point for Greg — credit for the case, but I certainly hope that no one takes the implication of Greg’s citation as somehow being a “Oh N0es – one ‘must not’ use such language.
Quite the opposite (from the case itself), the actual meaning is merely one of need not as opposed to ‘must not.’ The need not is because by using the language, one has already obtained the SAME scope as would be provided by the Doctrine of Equivalents.
Perhaps a snippet helps what Greg may have missed:
The patentee here has, by its choice of claim language, captured the same “range of novelty” that typically justifies application of the doctrine of equivalents. See Festo, 535 U.S. at 731, 122 S.Ct. 1831 (holding that “[t]he scope of a patent is not limited to its literal terms but instead embraces all equivalents to the claims described,” because “[t]he language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty.”).
Where, as here, a patentee has brought what would otherwise be equivalents of a limitation into the literal scope of the claim, the doctrine of equivalents is unavailable to further broaden the scope of the claim. In these circumstances, a patentee cannot rely on the doctrine of equivalents to encompass equivalents of equivalents. Here, because the “about 30 µm” limitation already literally encompasses diameters that are equivalent to 30 µm in the context of the patent, any particle diameter that performs the same function, in the same way, with the same result as a 30 µ m diameter is already within the literal scope of the claim. Cohesive therefore cannot rely on the doctrine of equivalents for that limitation. Since the “about 30 µm” limitation was the only disputed limitation, the district court was correct to grant summary judgment in favor of Waters on the issue of infringement by equivalents.
… by including “about” in the claim, the patentee cannot argue doctrine-of-equivalents on this limitation.
It occurs to me that one might equally well phrase this as “the doctrine of equivalents construction of this limitation collapses into the literal infringement construction.” That means that, by including “about” in front of your numerical limitation, you prevent yourself from being denied a doctrine of equivalents reach because of prosecution history estoppel, claim vitiation, or dedication to the public.
Thanks IPGUY – The “about” issue was also noted by the court in the opinion and I discussed it briefly in my original article on the case back in December. link to patentlyo.com
2.1.1
I was just teasing there, Dennis.
1
Is there a difference? Depends on the context. If the context is a patent claim then the context is the specification that supports the claim. Every specification is different. Ask (in every case): what was the writer of the patent using the language of the claim to mean.
Personally, I abhor the presence of “about” in a patent claim. Either its presence does not alter the meaning of the claim, or it does. If it does not, then “about” is superfluous. If it does, then its presence renders the meaning of the claim uncertain. The USPTO should object to it, every time, like they do at the EPO.
1.1
Depends on the definitions in the specification and depends on the prosecution history. For example, if the second of the two terms is ultimately used because the modifier” about” was deleted during prosecution in response to a rejection, then the second term certainly should be construed more narrowly than the first.
1.1.1
My comment at 1.1 was meant to be an independent comment, MD, and not a response to your comment. That said, suffice it to say we are in general agreement regarding the answer.
1.1.1.1
OK. Your comment reminds us of the difference between Europe and the USA when it comes to the issues i) “file history” and ii) whether the specification should disturb or displace the plain meaning of a clear claim.
1.2
Max, if the EPO objects to “about” before a numerical number, how does the EPO treat “approximately?”
1.2.1
Paul, as far as I’m concerned, about and approximarely are synonyms. I would say that they are too for every EPO Examiner. If not for you, why is that then?
1.3
MaxDrei certainly brings chuckles, as even when he starts out correctly…
… for example, with: “ Is there a difference? Depends on the context.”
He goes ahead and contradicts himself with a statement that throws that very same context out the window (my emphasis):
“The USPTO should object to it, every time, like they do at the EPO”
(yes, a double whammy if you notice that yet again MaxDrei shills for an EPO Uber Alles position)
1.4
Please Pardon Potential rePeat (filter):
Your comment is awaiting moderation.
February 5, 2022 at 10:16 am
MaxDrei certainly brings chuckles, as even when he starts out correctly…
… for example, with: “ Is there a difference? Depends on the context.”
He goes ahead and contradicts himself with a statement that throws that very same context out the window (my emphasis):
“The USPTO should object to it, every time, like they do at the EPO”
(yes, a double whammy if you notice that yet again MaxDrei shills for an EPO Uber Alles position)
1.5
Does your comment change if “about” is defined in the application itself?
1.5.1
Good point.
Relatedly, what if the word “about” appears only in the claim/s . . . yet the app provides a numerical range? Is there 112 support then?
1.5.1.1
original or amended…?
(and do you recognize why that question may well be pertinent?)
1.5.1.1.1
Yes; I do so recognize. Good point.
1.5.2
Agent, I suppose that your question is directed at me. I am able to answer for practice at the EPO but not at the USPTO.
At the EPO, the definition in the specification would encourage an Examiner to object to “about” in the claim.
At the EPO, the aim is to allow only claims that are clear. The word “about” renders the claim unclear. But replacing it with the definition taken from the specification would overcome that objection.
Except that if the definition is itself unclear, its inclusion in the claim would provoke a new objection to the clarity of the claim.
Why is the EPO so fierce on clarity? Because under the EPC, you can’t attack an issued claim for lack of clarity. The courts have to construe it as it is and can’t escape that duty by declaring it to lack clarity. So, you see, there is pressure on the EPO not to allow unclear claims to issue.
And at the USPTO?
1.5.2.1
“The word “about” renders the claim unclear.”
Clearly not so under US law — your question has already been answered.
Musher Found. v. Alba Trading Co., 150 F.2d 885, 889 (2d Cir. 1945) (L. Hand, J.)
It seems to me that everything that Judge Learned Hand said about “substantially” applies with equal force to “about” in the context of a numerical limitation.
Greg, that fits perfectly with the jurisprudence of the courts of England that I learned 40 odd years ago. What a great cite. Are not “about” and “approximately” and “substantially” all pretty much “more or less” the same thing? If not, how do they differ?
Remains to be seen what others here make of your citation.
Did you bother (at all) with Greg’s more recent citation?
Yes, surely they are different.
MaxDrei gives the EPO stance: “about”, without qualification, is indefinite.
I think he’s right that the USPTO should also consider it indefinite if used without qualification – after all, what does “about 4” mean? – 3.9-4.1, 3.6-4.4, somewhere between 1 and 10?
But if you’re going to qualify/define it (e.g., “‘about’ means within 10%”), then you don’t need “about”, you can just write what you have defined, such as 3.6-4.4 instead of about 4.
The next question is “‘0.1%’ versus ‘0.10%’ – is there a difference?”
And I’d say again, yes, surely they are different.
Derek,
See the case that Greg provided (but not just his take-away).
By definition, “about” modifies whatever .1 means so it adds a penumbra of uncertainty, in context or without it and by reference to a particular specification or more generally. How broad that penumbra is is a different matter….
No question, “about” adds a penumbra of uncertainty.
Does it add such a penumbra of uncertainty that a claim to “about .1%” is indefinite? – that’s the claim validity question.
Does it add such a penumbra of uncertainty that the claim catches an infringer operating at, say, 0.8% – that’s the infringement question.
Where would you rather risk your problem?
Still not convinced that “about” always adds a penumbra of uncertainty. Does it not alwys depend on context? I mean, what if I write that 1% of domestic cats have green eyes. Does it make any difference if I write that about 1% have geeen eyes?
Or consider a claim to a process of producing a commercial continuous cast alloy composition, which specifies 1% by weight of a particulate nuclating agent. Given the vagaries of commercial production of alloy compositions, the amount you will find in any given end product sample is never going to be exactly 1%. That much is implicit to every skilled reader of the claim. Adding “about” to the language of the claim makes no difference because it doesn’t alter the target amount of !% specified to the alloy casters. Rather, whether or not to add “about” is nothing more than the personal choice of the individual claim drafter.
As to “Rather, whether or not to add “about” is nothing more than the personal choice of the individual claim drafter.”
That would be a No (leastwise here in the States).
Max:
While I agree with you about your cats with green eyes example, no difference, that’s irrelevant to the discussion – we’re talking about patent claims and the statutory and judge-made rules governing their interpretation and not conversation.
And, as Anon says, “that would be a No” in the US.
Indeed. Derek, I’m (more or less) retired so I can indulge myself with thoughts of what the law ought to be as opposed to what it is.
New decisions of each of the Supreme Court in England, and the Enlarged Board of Appeal at the EPO, and SCOTUS in the USA, never cease to surprise me and so I post to “America’s leading patent law blog” in the (perhaps illusionary) thought that what gets posted here will have an effect on the progress of the jurisprudence.
So I’m not 100% convinced that what I write here is “irrelevant”.
OK, that would be , today, a “No”. But who cares about today? Patent attorneys drafting patent applications care about what the courts will decide 10, or 20, years on from today.
See #7, from Greg. What goes around comes around, oder?
Your “indulgences” have been noted.
Who cares, indeed.
Does “adds a penumbra of uncertainty” translate to academic speak for “I don’t like it”….?
Or do you think that ANY language carries absolute certainty?
I guess it can also depend on the country you are prosecuting in, and the official language. Also, some terms do not translate as well as others. An examiner in China rejected a claim because the claim used “generally” (as in “generally vertical”) and that made the claim unclear/indefinite.
I believe that most practitioners view “about” as another way of saying “more or less.” I think viewpoint has a lot to do with how your mentors taught you, and you were taught your claim drafting skills. When I first started out as an associate, I wrote “about vertical” in a claim, but the partner reviewing my work wanted it changed to “generally vertical”. His view was that “about vertical” implied rotation about the vertical axis. After that, whenever I drafted claims involving vertical or horizontal orientation, I would used “generally” in front of horizontal or vertical.
The exact value is vulnerable to 112(a) because of measurement uncertainty. The approximate is vulnerable to 112(b). It would be interesting to see what the factfinder would do with “the average value approaches x% in the limit as the number of measurements increases.”
Don,
The “average value” line appears to be the rejected thinking in the case that Greg provided.
At a minimum, the difference between the two is that by including “about” in the claim, the patentee cannot argue doctrine-of-equivalents on this limitation. Cohesive Tech. v. Waters Corp., 543 F.3d 1351, 1372 (Fed. Cir. 2008).
Heh. The issue of whether a claim element modified by “about” could be infringed under the doctrine of equivalents was one of the issues on my plate when I left private practice for in-house telecom work in August 2008. Had I waited . . .
A partial point for Greg — credit for the case, but I certainly hope that no one takes the implication of Greg’s citation as somehow being a “Oh N0es – one ‘must not’ use such language.
Quite the opposite (from the case itself), the actual meaning is merely one of need not as opposed to ‘must not.’ The need not is because by using the language, one has already obtained the SAME scope as would be provided by the Doctrine of Equivalents.
Perhaps a snippet helps what Greg may have missed:
The patentee here has, by its choice of claim language, captured the same “range of novelty” that typically justifies application of the doctrine of equivalents. See Festo, 535 U.S. at 731, 122 S.Ct. 1831 (holding that “[t]he scope of a patent is not limited to its literal terms but instead embraces all equivalents to the claims described,” because “[t]he language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty.”).
Where, as here, a patentee has brought what would otherwise be equivalents of a limitation into the literal scope of the claim, the doctrine of equivalents is unavailable to further broaden the scope of the claim. In these circumstances, a patentee cannot rely on the doctrine of equivalents to encompass equivalents of equivalents. Here, because the “about 30 µm” limitation already literally encompasses diameters that are equivalent to 30 µm in the context of the patent, any particle diameter that performs the same function, in the same way, with the same result as a 30 µ m diameter is already within the literal scope of the claim. Cohesive therefore cannot rely on the doctrine of equivalents for that limitation. Since the “about 30 µm” limitation was the only disputed limitation, the district court was correct to grant summary judgment in favor of Waters on the issue of infringement by equivalents.
Cohesive Tech. v. Waters Corp., 543 F.3d 1351, 1372 (Fed. Cir. 2008)
… by including “about” in the claim, the patentee cannot argue doctrine-of-equivalents on this limitation.
It occurs to me that one might equally well phrase this as “the doctrine of equivalents construction of this limitation collapses into the literal infringement construction.” That means that, by including “about” in front of your numerical limitation, you prevent yourself from being denied a doctrine of equivalents reach because of prosecution history estoppel, claim vitiation, or dedication to the public.
This question seems oddly familiar. See Comment 5 at
link to patentlyo.com
Thanks IPGUY – The “about” issue was also noted by the court in the opinion and I discussed it briefly in my original article on the case back in December. link to patentlyo.com
I was just teasing there, Dennis.
Is there a difference? Depends on the context. If the context is a patent claim then the context is the specification that supports the claim. Every specification is different. Ask (in every case): what was the writer of the patent using the language of the claim to mean.
Personally, I abhor the presence of “about” in a patent claim. Either its presence does not alter the meaning of the claim, or it does. If it does not, then “about” is superfluous. If it does, then its presence renders the meaning of the claim uncertain. The USPTO should object to it, every time, like they do at the EPO.
Depends on the definitions in the specification and depends on the prosecution history. For example, if the second of the two terms is ultimately used because the modifier” about” was deleted during prosecution in response to a rejection, then the second term certainly should be construed more narrowly than the first.
My comment at 1.1 was meant to be an independent comment, MD, and not a response to your comment. That said, suffice it to say we are in general agreement regarding the answer.
OK. Your comment reminds us of the difference between Europe and the USA when it comes to the issues i) “file history” and ii) whether the specification should disturb or displace the plain meaning of a clear claim.
Max, if the EPO objects to “about” before a numerical number, how does the EPO treat “approximately?”
Paul, as far as I’m concerned, about and approximarely are synonyms. I would say that they are too for every EPO Examiner. If not for you, why is that then?
MaxDrei certainly brings chuckles, as even when he starts out correctly…
… for example, with: “ Is there a difference? Depends on the context.”
He goes ahead and contradicts himself with a statement that throws that very same context out the window (my emphasis):
“The USPTO should object to it, every time, like they do at the EPO”
(yes, a double whammy if you notice that yet again MaxDrei shills for an EPO Uber Alles position)
Please Pardon Potential rePeat (filter):
Your comment is awaiting moderation.
February 5, 2022 at 10:16 am
MaxDrei certainly brings chuckles, as even when he starts out correctly…
… for example, with: “ Is there a difference? Depends on the context.”
He goes ahead and contradicts himself with a statement that throws that very same context out the window (my emphasis):
“The USPTO should object to it, every time, like they do at the EPO”
(yes, a double whammy if you notice that yet again MaxDrei shills for an EPO Uber Alles position)
Does your comment change if “about” is defined in the application itself?
Good point.
Relatedly, what if the word “about” appears only in the claim/s . . . yet the app provides a numerical range? Is there 112 support then?
original or amended…?
(and do you recognize why that question may well be pertinent?)
Yes; I do so recognize. Good point.
Agent, I suppose that your question is directed at me. I am able to answer for practice at the EPO but not at the USPTO.
At the EPO, the definition in the specification would encourage an Examiner to object to “about” in the claim.
At the EPO, the aim is to allow only claims that are clear. The word “about” renders the claim unclear. But replacing it with the definition taken from the specification would overcome that objection.
Except that if the definition is itself unclear, its inclusion in the claim would provoke a new objection to the clarity of the claim.
Why is the EPO so fierce on clarity? Because under the EPC, you can’t attack an issued claim for lack of clarity. The courts have to construe it as it is and can’t escape that duty by declaring it to lack clarity. So, you see, there is pressure on the EPO not to allow unclear claims to issue.
And at the USPTO?
“The word “about” renders the claim unclear.”
Clearly not so under US law — your question has already been answered.
Comments are closed.