[Patentpractice] The use of "and/or" in claims

[David Boundy]

PL> questions examiners interpretation of and/or

I agree with the several comments that the examiner's interpretation is the
correct "broadest reasonable interpretation"

RS> So we agree using "and/or" in claims is open to multiple interpretations

I disagree EMPHATICALLY with RS.   "and/or" has one and only one meaning,
"inclusive or."   Naked "or" is ambiguous, either "inclusive or" or
"exclusive or" with no predictable rhyme or reeason.  A cynic could easily
conclude that --

Naked "or" means "exclusive or" if the defendant raises a non-infringement
defense.  Naked "or" means "inclusive or" if the defendant raises an
invalidity defense.

I NEVER use naked "or."  I always use something that is unambiguous --
"and/or" often is my choice.  If the examiner says this is indefinite, I
often cite Gross, see Bryan Wheelock's email.

You also have to watch out for forms that can mean "any one of x y or z in
pure form, no mixtures or alloys."  Any ambiguity gives a defendant a free
option to choose invalidity or noninfringement.


On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> So we agree using "and/or" in claims is open to multiple interpretations.
> If you don't want to create a potential $$$litigation issue,  use
> unambiguous language like "at least one of A, B or C" as suggested below.
>
> I agree the examiner uses the broadest interpretation in prosecution so
> he/she just needs a reference with any of them.
>
> On Fri, Dec 1, 2023, 10:04 Patent Lawyer via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> We've seen this before, but I cannot find the discussion.
>>
>>
>>
>> In an office action, an examiner writes:
>>
>>
>>
>> *All claim limitations that include "and/or" are interpreted as "or".  If
>> applicant disagrees with this interpretation, they are invited to amend the
>> "and/or" to "and".*
>>
>>
>>
>> I believe the examiner is wrong!  And I will point that out.
>>
>>
>>
>> BUT I recall that there was some case that discussed this.
>>
>> I would appreciate a pointer to a case or other reference discussing this
>> issue.
>>
>> Thanks in advance.
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
> --
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>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> So we agree using "and/or" in claims is open to multiple interpretations.
> If you don't want to create a potential $$$litigation issue,  use
> unambiguous language like "at least one of A, B or C" as suggested below.
>
> I agree the examiner uses the broadest interpretation in prosecution so
> he/she just needs a reference with any of them.
>
> On Fri, Dec 1, 2023, 10:04 Patent Lawyer via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> We've seen this before, but I cannot find the discussion.
>>
>>
>>
>> In an office action, an examiner writes:
>>
>>
>>
>> *All claim limitations that include "and/or" are interpreted as "or".  If
>> applicant disagrees with this interpretation, they are invited to amend the
>> "and/or" to "and".*
>>
>>
>>
>> I believe the examiner is wrong!  And I will point that out.
>>
>>
>>
>> BUT I recall that there was some case that discussed this.
>>
>> I would appreciate a pointer to a case or other reference discussing this
>> issue.
>>
>> Thanks in advance.
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> So we agree using "and/or" in claims is open to multiple interpretations.
> If you don't want to create a potential $$$litigation issue,  use
> unambiguous language like "at least one of A, B or C" as suggested below.
>
> I agree the examiner uses the broadest interpretation in prosecution so
> he/she just needs a reference with any of them.
>
> On Fri, Dec 1, 2023, 10:04 Patent Lawyer via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> We've seen this before, but I cannot find the discussion.
>>
>>
>>
>> In an office action, an examiner writes:
>>
>>
>>
>> *All claim limitations that include "and/or" are interpreted as "or".  If
>> applicant disagrees with this interpretation, they are invited to amend the
>> "and/or" to "and".*
>>
>>
>>
>> I believe the examiner is wrong!  And I will point that out.
>>
>>
>>
>> BUT I recall that there was some case that discussed this.
>>
>> I would appreciate a pointer to a case or other reference discussing this
>> issue.
>>
>> Thanks in advance.
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
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