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

Randy Smith ers at ipsafeguard.com
Sun Dec 3 11:26:55 EST 2023 

At least one of a, b or c.

On Sun, Dec 3, 2023, 07:43 David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Carl's word substitution works when you have two components.   It doesn't
> work for three.  Then you have to start exploding out the full cross
> product / power set of possible combinations.
>
> There are times to tell an examiner to go suck eggs.  This is one of
> them.   Here's an argument I gave
>
> • Webster’s Third New International Dictionary (the dictionary most often
> relied on by the Federal Circuit) defines “and/or” as “a function word to
> indicate that words are to be taken together or individually.”
> • Webster’s New Twentieth Century Dictionary gives the following
> definition, which is equivalent: “and/or either and or or; according to
> what applies: as, personal and/or real property.”
> • Webster’s New Collegiate gives the same definition as Webster’s Third
> New International.
> • The American Heritage Dictionary gives “and/or conj. Used to indicate
> that either or both of the items connected by it are involved.”
> • In December 2013, the Patent Trial and Appeal Board held that “and/or”
> is not indefinite, *Ex parte Gross*, Appeal. No. 2011-4811, slip op. at
> 4, 2013 WL 6907805 at *2 (PTAB Dec. 31, 2013) (unpublished) (citations
> omitted):
> The Examiner rejected [claims] as indefinite based on the use of the term
> “and/or.” We agree with Appellant that “and/or” covers embodiments having
> element A alone, element B alone, or elements A and B taken together.
> • The expression “and/or” is used regularly throughout the MPEP, for
> example, in the form paragraphs that the PTO gives examiners to ensure that
> issues are communicated definitely. The PTO considers the term “and/or” to
> be clear and definite.
>
> MPEP §§ 2111 and 2111.01 instruct as follows (citations and quotations
> omitted):
> The broadest reasonable interpretation of the claims must also be
> consistent with the
> interpretation that those skilled in the art would reach….
>
> The Office Action identifies no ambiguity in the term “and/or,” and no
> other reason to believe that it is indefinite. “And/or” is definite because
> it has one and only one meaning, equivalent to “inclusive or.”  No other
> compact wording has the same unambiguous meaning.
>
> On Sat, Dec 2, 2023 at 4:49 AM Carl Oppedahl <carl at oppedahl.com> wrote:
>
>> 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 | +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.
>>>>
>>>> --
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>>>>
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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.
>>>>
>>>> --
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>>>> Patentpractice at oppedahl-lists.com
>>>>
>>>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>>>
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>>>>
>>>
>>
>> --
>>
>>
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>>
>> *David Boundy *| Partner | Potomac Law Group, PLLC
>>
>> P.O. Box 590638, Newton, MA  02459
>>
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>>
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>> <http://www.potomaclaw.com>*
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>
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>
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>
> P.O. Box 590638, Newton, MA  02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
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> <http://www.potomaclaw.com>*
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