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

Fri Dec 1 15:57:17 EST 2023

For whatever it is worth, my template patent application includes the following boilerplate language:

As used herein, including in the claims, the term “and/or,” used in connection with a list of items or categories, means one or more of the items or categories in the list, i.e., at least one of the items or categories in the list, but not necessarily all the items in the list and not necessarily one item from each category in the list. As used herein, including in the claims, the term “or,” used in connection with a list of items or categories, means one or more of the items or categories in the list, i.e., at least one of the items or categories in the list, but not necessarily all the items in the list and not necessarily one item from each category in the list. “Or” does not mean “exclusive or,” and “or” does not mean “at least one from each (category).”

Best regards,
George
George Jakobsche Patent Counsel PLLC
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Bryan McWhorter via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Friday, December 1, 2023 at 2:24 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Bryan McWhorter <bryan at bggm.net>
Subject: Re: [Patentpractice] The use of "and/or" in claims
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<mailto: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<mailto: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<mailto: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.
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On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto: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.
--
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On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto: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.
--
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