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I am concerned that using the phrase comprising:

An entertainment system for children to marvel upon, glass spheres are contained in a glass jar, the system comprising:

  • red marbles;
  • white marbles; and
  • blue marbles.

Assume that the I have invented and claimed a blue marble in the application and that red & white are prior art.

The concern here is that comprising indicates that the system must have at least one of each of the three colors. In this case, a competitor with a system of 1 or 2 marbles would not infringe (these systems do not have the requisite 3 colored marbles) and the claim is defeated. Is there a less restrictive version of the term comprising in the sense that the line items may, but NOT necessarily be included?

As I understand from this example, the examiner will interpret from the keyword comprising that only combinations that include all 3 line-items are claimed.

By use of the connecting or transition word "comprising" ("open" language), the claim says, "the device has at least these things, but might have other things also." Other connecting words have other meanings - for example, if what was claimed was a motor vehicle "consisting of" the list ("closed" transition language), then the motor vehicle would have that list and nothing else. A car having the listed elements and seats would not infringe.

Is there a replacement for comprising? So as to communicate the system has at least one marble and that in 3+ marble systems, combinations of 1, 2, or 3 marbles are within scope of the claim and that possibly 4 if another marble is introduced (the goal is to deter competitors from working around the claim with systems not including all 3 marbles or introducing a fourth marble color and defeating the claim).

  • the system comprising at least one of, but not limited to: – Fr0zenFyr Mar 5 '18 at 17:46
  • @Fr0zenFyr That wording would mean the feature is not a limitation and therefore would be meaningless in the claim. – Maca Mar 6 '18 at 0:59
  • @FrozenFyr - "but not limited to" makes sense in the specification, not in the claims. – George White Mar 6 '18 at 18:48
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In the U.S. there is a type of claim called a Markush claim. The conventional wording is : "selected from the group consisting of A, B, and C." So, if it correctly defines your minimum configuration, you could say, "a container containing at least two marbles where at least one marble is blue and at least one marble is of a color selected from the group consisting of red and white." Be careful to use "and", not "or", in your list even though "or" might sound more standard to the ear. I would also use the Oxford comma if the list has more than two items.

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You know, english grammar applies to patents. Sure, comprising etc sound like patent language, but honestly you can write “it has this and or that and at least this and maybe that“ into a claim. Standard wording is about structure of writing. You don't want to invent new words every time you write a patent.

Now, to answer your question, comprising is the go for alternative to “consisting of“ in most cases because the later means that only those features are present.

You are right, comprising means all of those are there.

Specifically for your example, it's easy, you claim your invention and totally leave out the prior art if its not necessary.

Put the combination of your invention with specific prior art into other claims if you think the combination might be interesting.

In other cases where you need something but it can be substituted, find a general term, for example “it comprises one or more marvels“ and make another claim with “the marvels can be blue and or green and or red marvels.“

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  • Agreed: I am seeking to use 'standard' wording that is concise and more importantly familiar to the reader (USPTO examiner): the last thing I want to do is 're-invent the wheel'. If there is a single word to replace 'comprising' that meets the above goal, that would be appreciated – gatorback Mar 4 '18 at 0:05
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What about:

The system comprising one or more blue marbles.

You've noted that red and white marbles are prior art. Then why include them? As DonQuiKong suitably notes in his answer: "you claim your invention and totally leave out the prior art if it's not necessary".

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  • @DonQuiKong Oh yes, that is a good point. I missed the paragraph where that was noted... – Maca Mar 3 '18 at 21:31
  • An excellent response, with a better question regarding including prior art: goals include a claiming any system with a blue marble and the specific red-white prior art, because in the actual application 'red' and 'white' need to be called out. I am hesitating because my reading and gut tells me that I should refrain from citing prior art whenever possible. – gatorback Mar 4 '18 at 0:16

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