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

Fri Dec 1 22:23:21 EST 2023

I'm with Randall.  "and/or" has only one meaning.  It is REALLY difficult
to find other words that unambiguously mean the same thing.   If you start
with "and/or" and you amend, then you are just asking to lose.

I disagree with Jaroen to the extent that he characterizes "at least one
of" as "more proper US claim language."   "And/or" is as proper as it gets.
Jaroen's anecdote points up the problem -- it is *really* hard to write
conjunctions that mean exactly what you mean.  If "and/or" does it, it's
foolish to try to improvise something else.

When an examiner is dead wrong, it's our job to educate the examiner, not
to crappify a perfectly good claim, or take the risk of trying to invent
something else that is as unambiguous as "and/or."  See 11/929,594 Reply of
Nov 7, 2016, at pages 20-21.   I cite *Ex parte Gross*, back in the days
when the PTO made PTAB decisions citeable by URL.

On Fri, Dec 1, 2023 at 3:27 PM Scott C. Sample via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Snark and an actual instance of “begging the question” in the wild from
> the bench…double ouch.
>
> *Scott C. Sample*********
>
> *CULHANE|MEADOWS PLLC <http://www.culhanemeadows.com/>*
>
> [image: Direct:]
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>   469-444-1488
>
> [image: Email:]
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>   ssample at cm.law
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>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Randall Svihla via Patentpractice
> *Sent:* Friday, December 1, 2023 2:20 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Randall Svihla <rsvihla at nsiplaw.com>
> *Subject:* Re: [Patentpractice] The use of "and/or" in claims
>
>
>
> EXTERNAL EMAIL
>
> “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
>
> <https://www.aosmith.com/>
> *11270 W Park Place*
>
> *Milwaukee, WI 53224*
>
> * email: 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
>
>
>
> This message has originated from an *External Source*. Please use proper
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> responding to this email.
>
> 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> on
> behalf of Alan Taboada via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Reply-To: *"For patent practitioners. This is not for laypersons to seek
> legal advice." <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>
> *Cc: *Alan Taboada <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> *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>
> *Cc:* Patent Lawyer <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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