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

[Randall Svihla]

"you had what you originally wanted and you amended it out - that's on you."  Ouch.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Valensa, Jeroen via Patentpractice
Sent: Friday, December 1, 2023 2:35 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Valensa, Jeroen <jevalensa at aosmith.com>
Subject: Re: [Patentpractice] The use of "and/or" in claims

I will weigh in with my own experience at the Fed. Circ. on this issue.  Note that this was not at my current employer, but was at a prior (also in-house) position.  Similar to your case, we had a US patent that originated from a foreign priority filing (German, in this case).  The claim had and/or language as originally filed, from the translation.  We proactively (i.e. not in response to a rejection) amended it to more proper US claim language: "at least one of an A and a B", instead of the original "an A and/or a B".

The patent ended up being asserted against a competitor, and at the district court the claim construction that the judge adopted (wrongly) was that the claim required both an A and a B, and since the accused infringer's product only had an A and not a B, summary judgement for defendant.

We appealed.  Fed. Circ. affirmed with no opinion (Rule 36).  Notably, (then Chief-)Judge Prost, who wrote the opinion in SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), headed up the panel.  In SuperGuide, the Fed. Circ. distinguished between categories on the one hand, and individual items that may serve as replacements for each other on the other hand.  The Federal Circuit repeatedly discusses that the plain and ordinary meaning of "at least one of A and B" is "at least one of category A and at least one of category B" (the conjunctive interpretation) when A and B are categories of things.  According to the Fed Circ., the plain and ordinary meaning of "at least one of A and B", at least when the two are categories, is the conjunctive, requiring at least one A and at least one B.  In order for it to be treated in the disjunctive (e.g. A or B or both) requires a clear indication in the specification or prosecution record that this is the intended interpretation.

Since there was no opinion written, I have no definitive answer to why they affirmed, but I'm fairly certain that we were hamstrung by the very limited written description (typical of German applications), which did not provided a clear interpretation that you could have an A or a B or both.

I still remember one statement at oral argument by Judge Clevenger, which I want to impart to you.  Referring to the original "and/or" language of the claim, he said something to the effect of, "you had what you originally wanted and you amended it out - that's on you."


Jeroen Valensa
Assistant General Counsel - Intellectual Property
[cid:image001.jpg at 01DA2469.E61F06D0]<https://www.aosmith.com/>
11270 W Park Place
Milwaukee, WI 53224
* email: jevalensa at aosmith.com<mailto:jevalensa at aosmith.com>


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Patentpractice
Sent: Friday, December 1, 2023 12:00 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
Subject: Re: [Patentpractice] The use of "and/or" in claims


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Thanks for this and other responses.

I think the correct (low risk) approach is to rewrite the claims without the term "and/or".
Why risk some weird Federal Circuit interpretation?

I won't say that "and/or" is a lazy way of writing, because I do it all the time and I know exactly what it means and what I mean.  But the Federal Circuit has changed the rules of English grammar before.
I'll just take the issue off the table.  (The claims are already being amended for other reasons.)

Also, this application was written outside the US and there is no option to add something now to the specification explaining what "and/or" means.

Again, thanks to all for responses.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Alan Taboada via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Friday, December 1, 2023 at 12:35 PM
To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Alan Taboada <ataboada at mtiplaw.com<mailto:ataboada at mtiplaw.com>>
Subject: Re: [Patentpractice] The use of "and/or" in claims

Not sure about a case citation, but the following is my view on this matter.

There mght be situations where it doesn't work out this way, but without further information, I think examiner might be correct on this one.

In general, "A and/or B" covers claim scope of "A and B" and "A or B" so any prior art that shows either would be relevant to the claim.

Generally speaking, "A or B" is typically broader than "A or B" (again, we do not know the exact claim language, but I think that typically this would be the case).

Since the examiner only needs to meet the limitations of either one of A or B to read on the claim limitation, then the examiner will (rightly) construe the claim more broadly and not worry about having to find art that shows both A and B.



From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Patent Lawyer via Patentpractice
Sent: Friday, December 1, 2023 11:04 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>
Subject: [Patentpractice] The use of "and/or" in claims

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.


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