[Patentpractice] The use of "and/or" in claims
Carl Oppedahl
carl at oppedahl.com
Sat Dec 2 04:48:52 EST 2023
What he said. If anybody wonders what "and/or" means in a patent claim,
we already know the answer. The term "A and/or B" means "A or B or 'A
and B'". There is no reason to spend additional time or energy working
on some other way to say it. And yes, if an Examiner gripes about the
term "A and/or B" in a claim, the way to shut up the Examiner is to make
an amendment as to form that is "A or B or 'A and B'". The scope of the
claim will be unchanged for Festo purposes and for all other purposes.
Yes I get it that sometimes the A and the B have high word counts. Too
bad so sad. Yes when we then do the symbol manipulation that converts
"A and/or B" into "A or B or 'A and B'", we may end up with a wholly
unreadable claim and a word count in the hundreds. To the extent that
blame must be assigned, it lands on the Examiner. Everybody already
knew what "and/or" meant but the Examiner played dumb on this. Too bad
so sad.
Look for the silver lining in the cloud. If there had been any doubt
about whether the claim was patentable under the four-finger rule
<https://blog.oppedahl.com/imbrication/>, the amendment to do the symbol
manipulation that converts "A and/or B" into "A or B or 'A and B'" will
eliminate any doubt as to patentability.
On 12/1/2023 7:50 PM, David Boundy via Patentpractice wrote:
> 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>
> 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> 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> 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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>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
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>
>
>
> --
>
>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner |Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
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>
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