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Ex parte Gross

Jan 8, 2014
Harold C. Wegner

"And/Or" § 112(b) Claim Indefiniteness Issues

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Last week in Ex parte Gross, __ WL ___ (PTAB 2014)(Mantis Mercader, J.), the panel reversed a rejection of claims for indefiniteness under what today is 35 USC § 112(b) based solely upon the use in the claim of the “disjunctive conjunction ‘and/or’”, In re Herrick, 344 F.2d 713 (CCPA 1967)(“disjunctive conjunction ‘and/or’”).

Win at the Patent Office, but what Happens if the Patent is enforced? One may question the wisdom of the use of the disjunctive conjunction in patent claims as they create unnecessary challenges before the Examiner (as here) but, more importantly, leave the question of patent validity an open book as seen in the Bushnell case:

“A claim is indefinite when an ‘and/or’ construction requires separate infringement determinations for every set of circumstances in which the claim may be used, and such determinations are likely to result in differing outcomes (sometimes infringing and sometimes not).” Bushnell, Inc. v. Brunton Co., 673 F. Supp. 2d 1241, 1256 (D. Kansas 2009)(citing Halliburton Energy Servs., Inc., v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)).

An Established Meaning: As explained in the Pavilion case:

“According to [the patent challenger], the use of the term "and/or" renders the entire claim fatally indefinite. [The patent challenger] feigns confusion over the meaning of this phrase *** However, most, if not all, ordinary speakers of the English language should recognize that "and/or" has a particularized meaning that is distinct from the individual words "and" and "or." See AM. COLLEGE HERITAGE DICTIONARY 53 (4th ed. 2002) (describing "and/or" as a conjunction "[u]sed to indicate that either or both of the items connected by it are involved").” Pavilion Techs., Inc. v. Emerson Elec. Co., 2006 U.S. Dist. LEXIS 100913 (W.D. Tex. 2006).

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