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

Randall Svihla rsvihla at nsiplaw.com
Fri Dec 1 23:00:21 EST 2023 

This is excellent practical advice.

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Friday, December 1, 2023 9:50 PM
To: David Boundy <DavidBoundyEsq at gmail.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] The use of "and/or" in claims

A couple people asked about why I hold my view that definitions are Bad Bad Bad.  Reasons to lose definitions --
    0.  for definitions that track the dictionary definition, there's NO upside.  It's just a waste.
    1.  They tie your future litigator's hands.  A successful enforcement action has to get a claim construction that is not too narrow, not too broad, just right.  Every definition takes away a degree of freedom that your litigator might need.
    2.   It takes away flexibility that you will likely need. during prosecution.
    3.   It gives infringers a green light -- some degree of ambiguity is your friend for some portions of a patent's life.
    4.   Inevitably, if you have more than a page or so, there will be an error.  Typically that error will be about some corner case you didn't think about.  Then you're really screwed.
    5.  Technology evolves.   Often technology words take on broader meanings over time.  A definition as of the time of filing will lock out that future progress. Staley v Cultor is a perfect case to illustrate the problem -- the patent had a definition taken from the relevant FDA reg--which you would think would be safe.  But the preferred synthesis for the compound changed over time.  So a definition led directly to non-infringement of a nine-figure patent.
    6.   Examiners almost never look at definitions in the spec.  Getting the examiner to credit a definition in the spec will almost always waste an office Action.  So put the words IN THE CLAIM.
    7.  They lead to lazy writing.
    8.   PCT, it costs you $15/page for zero upside.

In over 30 years, I don't think I have included three definitions in my specs.  Every time I have taken over a case with a bunch of definitions, these damn definitions have been a huge problem.

In the spec, I give definitions using word of example, followed by examples, not words of definition:   "Tyraonosoursous platformate may be oxide of 2- or 3-platen, complexed with tyranosor fluoride, oxide, or bromide, in its up, down, charm, strange, bottom, or top flavor."   I sometimes put definitions in dependent claims

I've written a longer essay on why definitions are bad bad bad several times to these lists -- if you search the archives for the word "Cultor" you'll find a longer essay.

On Fri, Dec 1, 2023 at 7:58 PM David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>> wrote:
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<mailto: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<mailto: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 intended recipient, do not read, copy, or distribute this message or any attachment(s). Instead, please notify the sender and delete the message and the attachment(s). Thank you.





From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Bryan McWhorter via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Bryan McWhorter <bryan at bggm.net<mailto: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.

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto: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<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.

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto: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<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.

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com


--

[https://ci3.googleusercontent.com/mail-sig/AIorK4wHwYjQzxHxAaQrLX1XiLlcQpAZ83upYUjMvJLtwefIP8dBVb6tJA9Yn2W4bPdW2A18c1EIEHg]
<https://www.iam-media.com/strategy300/individuals/david-boundy>

David Boundy | Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

dboundy at potomaclaw.com<mailto:dboundy at potomaclaw.com> | www.potomaclaw.com<http://www.potomaclaw.com>

Articles at http://ssrn.com/author=2936470<http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20231202/f62db68f/attachment.htm>

More information about the Patentpractice mailing list