[Patentpractice] Issued Claim Hypothetical - Definite? or Definitely Not?

Fri Jun 13 21:16:12 UTC 2025

Correct it... or else there is the possibility that one construction is that a and b must always go hand-in-hand, i.e., a can't be a limitation by itself because why else would there be the c limitation...

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Masson, Roger M. via Patentpractice
Sent: Friday, June 13, 2025 2:49 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Masson, Roger M. <RMasson at hinshawlaw.com>
Subject: Re: [Patentpractice] Issued Claim Hypothetical - Definite? or Definitely Not?

My practice is to correct. As written the claim is at least arguably indefinite - is the flange of b, the same as the flange of c? I would not wait because if an infringement claim accrues before correction then the uncorrected claim gets litigated per the correction statute.

Roger
Masson
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Alan Taboada via Patentpractice
Sent: Friday, June 13, 2025 12:12 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: Alan Taboada <ataboada at mtiplaw.com<mailto:ataboada at mtiplaw.com>>
Subject: [Patentpractice] Issued Claim Hypothetical - Definite? or Definitely Not?

Happy Friday, Everybody - I am looking into a hypothetical situation regarding issues surrounding a patent claim that includes duplicative limitations and whether the claim would be considered indefinite or not. For example, if an issued

Happy Friday, Everybody -

I am looking into a hypothetical situation regarding issues surrounding a patent claim that includes duplicative limitations and whether the claim would be considered indefinite or not.

For example, if an issued claim recited:

1. A widget, comprising:
a body, and at least one of:
            (a) a cap coupled to the body;
            (b) a flange extending from the middle of the body; or
            (c) a flange extending from the middle of the body.

In the above example, the alternatively recited limitations are not mutually exclusive but the "at least one of" language allows for multiple clauses to exist, so logically at least, the claim can include both (b) and (c).
But since (b) and (c) are identical, is that a problem with respect to the validity of the claim or would it be considered definite since if you have or don't have (b) you have or don't have (c)?

Also, I think this could be fixed by a certificate of correction to remove the duplicate limitation, but wondering if anyone has either had some experience with this or has a different point of view regarding potential issues.

Lastly, even if fixable by certificate of correction, since I believe that you can correct the claim at any time, is this something that is better left alone and only corrected if you think you are going to assert or perhaps license or sell the patent?  Or would you be better served to make the correction immediately upon discovery of the error so that the claim is cleaner as soon as possible?

Thanks.

Alan

Hinshaw & Culbertson LLP is an Illinois registered limited liability partnership that has elected to be governed by the Illinois Uniform Partnership Act (1997).

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