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

Sun Dec 3 14:33:36 EST 2023

That works, the clearer the better!  How about at least one of the group
consisting of at least one A, at least  one B and at least one C?

On Sun, Dec 3, 2023, 13:25 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> *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>
> *Cc:* Weitzmanip <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> 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 4, 2013 WL 6907805 at *2 (PTAB Dec. 31, 2013) (unpublished) (citations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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>
>
>
> 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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