[Patentpractice] The use of "and/or" in claims
Michael Dryja
mike at dryjapat.com
Sun Dec 3 14:30:54 EST 2023
I use “either or both of a and b” all the time. However, after seeing all the comments in this thread, I think I’m going to push back hard on examiners as to why “and/or” is not indefinite.
Someone below mentioned this:
> • 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.
Can anyone provide which parts of the MPEP show these paragraphs?
> On Dec 3, 2023, at 11:24 AM, Randall Svihla via Patentpractice <patentpractice at oppedahl-lists.com> wrote:
>
> How about my suggestions of "either one or both of a and b" and "any one or any combination of any two or more of a, b, and c"?
>
>
> From: Patentpractice <patentpractice-bounces at oppedahl-lists.com <mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Weitzmanip via Patentpractice
> Sent: Sunday, December 3, 2023 1:35 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: Weitzmanip <rstraussman at weitzmanip.com <mailto:rstraussman at weitzmanip.com>>
> Subject: Re: [Patentpractice] The use of "and/or" in claims
>
> How about “any one or more of a, b or c, individually or in combination “? That seems to be the most unambiguous encompassing of a, b, c, ab, ac, bc and abc.
>
> On Dec 3, 2023, at 8:45 AM, David Boundy via Patentpractice <patentpractice at oppedahl-lists.com <mailto: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 <mailto: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 <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
>
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>
>
> 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 $$$litigation issue, use unambiguous language like "at least one of A, B or C" as suggested below.
>
> I agree the examiner uses the broadest interpretation in prosecution so he/she just needs a reference with any of them.
>
> On Fri, Dec 1, 2023, 10:04 Patent Lawyer via Patentpractice <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com>> wrote:
> We've seen this before, but I cannot find the discussion.
>
> In an office action, an examiner writes:
>
> All claim limitations that include "and/or" are interpreted as "or". If applicant disagrees with this interpretation, they are invited to amend the "and/or" to "and".
>
> I believe the examiner is wrong! And I will point that out.
>
> BUT I recall that there was some case that discussed this.
> I would appreciate a pointer to a case or other reference discussing this issue.
> Thanks in advance.
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> On Fri, Dec 1, 2023, 12:09 PM Randy Smith via Patentpractice <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com>> wrote:
> So we agree using "and/or" in claims is open to multiple interpretations. If you don't want to create a potential $$$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.
> --
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>
> 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
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