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If in the first independent claim I say "an X comprising at least one guide mark on the first side" can I then say in a following dependent claim "the guide marks are also on the second side"? Does the "mark" becoming "marks" screw up the antecedent flow, or is it okay to jump to a plural spelling of the word.

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    Why not just use the phase "the one or more guide marks..." in the dependent claim?
    – Eric S ♦
    Dec 2, 2019 at 15:38
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    Eric’s suggestion might sound awkward but it is the usual/correct way to do it.
    – George White ♦
    Dec 2, 2019 at 17:18

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Yes, 'marks' lack antecedent basis. You have positively declared one mark, with the possibility of more marks*. Your dependent claim must introduce additional marks if you want to switch to the plural.

How you go about it is up to you and the rest of the claim language. One possibility is 'at least a first guide mark' in the independent claim, with a dependent declaring 'at least a second guide mark on the second side' If you're declaring the location of all the guide marks, you can follow Eric Shain's comment, and say 'the one or more guide marks are on the second side'. But you may be limited in describing how one mark relates to another mark.

* As a side note, while many practitioners prefer the 'one or more' (or 'at least one') the courts have said that 'a'/'an' does not mean only single element (as long as the claim is open-ended (i.e. a the preamble says 'comprising'). So if you have 'a guide mark' and an competitor has two guide marks, they infringe on your claim. See Baldwin Graphic Systems, Inc. v. Siebert, Inc., No. 07-1262 (Fed. Cir. Jan. 15, 2008) described in more detail at https://www.lexology.com/library/detail.aspx?g=b7cca4cf-1482-4df3-9ba1-5d8e9770e923

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  • I thought the word "or" is supposed to be avoided in claim construction due to the risk of indefiniteness. Is that not the case? In my case, one mark on the tool is the invention because of the relative angle to a particular edge, two marks are better, multiple different locations on the tool are better yet, all of the marks together comprise a cutting guide on the tool. I was thinking of using "further comprising" to get around the plural stuff. Can that work? Is there a problem with examiners or to clarity with using "further comprising" or "comprising" too many times in a claim?
    – Pro Se Hole
    Dec 6, 2019 at 12:25
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    @ProSeHole There are problems with the words 'and/or' but these cases are typically with X and Y and how it fits in the larger claim. Can you use the word 'and' to mean one and not the other (i.e. 'or') and can you use 'or' to mean 'or' or 'and'. But 'one or more' is not a problem and is recognized meaning 1 with the possibility of more
    – Gabriel Hendricks
    Dec 6, 2019 at 19:04
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    @ProSeHole using "comprising" and "further comprising a number of times in a claim is not a problem, especially if you use indentation and punctuation to help block off the super structure. You can also make it more repetitive saying X comprises Y, said Y further comprising A, B, and C, said B further comprising... and so on.
    – Gabriel Hendricks
    Dec 6, 2019 at 19:10

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