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

[Bryan McWhorter]

I generally agree with you David, though I take issue with the BRI of
"and/or" being "or" (potentially in an exclusive sense, though the examiner
does not seem to say).  It's true that and/or *encompasses* 'exclusive or',
and so this interpretation may work for art-based rejections (at least to
some extent).  But for other sections--Section 112 for example--or for more
complicated 103 questions, it's important to remember that "exclusive or"
is *not *the broadest reasonable interpretation of "and/or".

To be clear, I concur that 'and/or' is not in any way open to multiple
interpretations.

Bryan

On Fri, Dec 1, 2023 at 10:57 AM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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 $$$litigation
>> issue,  use unambiguous language like "at least one of A, B or C" as
>> suggested below.
>>
>> I agree the examiner uses the broadest interpretation in prosecution so
>> he/she just needs a reference with any of them.
>>
>> On Fri, Dec 1, 2023, 10:04 Patent Lawyer via Patentpractice <
>> patentpractice at oppedahl-lists.com> wrote:
>>
>>> We've seen this before, but I cannot find the discussion.
>>>
>>>
>>>
>>> In an office action, an examiner writes:
>>>
>>>
>>>
>>> *All claim limitations that include "and/or" are interpreted as "or".
>>> If applicant disagrees with this interpretation, they are invited to amend
>>> the "and/or" to "and".*
>>>
>>>
>>>
>>> I believe the examiner is wrong!  And I will point that out.
>>>
>>>
>>>
>>> BUT I recall that there was some case that discussed this.
>>>
>>> I would appreciate a pointer to a case or other reference discussing
>>> this issue.
>>>
>>> Thanks in advance.
>>> --
>>> Patentpractice mailing list
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>>>
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>> --
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>>
>
>
> On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> So we agree using "and/or" in claims is open to multiple
>> interpretations.  If you don't want to create a potential $$$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
>>>
>> --
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>>
> --
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>
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>
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