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

[David Boundy]

Boilerplate definitions of this sort will do you more harm than good.  Lose
the whole bunch.

On Fri, Dec 1, 2023, 2:57 PM George Jakobsche via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
> 39 Old Farm Road, Concord, MA 01742-5234
>
> George at JakobscheLaw.com | +1-978-245-8100
>
>
>
> This e-mail is from George Jakobsche Patent Counsel PLLC, a law firm, and
> it may contain confidential or privileged information. If you are not the
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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> 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 $$$litigation issue,  use
> unambiguous language like "at least one of A, B or C" as suggested below.
>
>
>
> I agree the examiner uses the broadest interpretation in prosecution so
> he/she just needs a reference with any of them.
>
>
>
> On Fri, Dec 1, 2023, 10:04 Patent Lawyer via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
> We've seen this before, but I cannot find the discussion.
>
>
>
> In an office action, an examiner writes:
>
>
>
> *All claim limitations that include "and/or" are interpreted as "or".  If
> applicant disagrees with this interpretation, they are invited to amend the
> "and/or" to "and".*
>
>
>
> I believe the examiner is wrong!  And I will point that out.
>
>
>
> BUT I recall that there was some case that discussed this.
>
> I would appreciate a pointer to a case or other reference discussing this
> issue.
>
> Thanks in advance.
>
> --
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>
>
>
> On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
> So we agree using "and/or" in claims is open to multiple interpretations.
> If you don't want to create a potential $$$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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