How in the blue blazes did this claim get ISSUED?

[MYK]

U.S. 7,479,323

1. An encapsulated pigment comprising an outer water-soluble shell, said shell comprising a water-soluble film former of polyvinyl alcohol (PVOH) encapsulating a core, said core comprising at least one effect pigment which is a pearlescent pigment or a multilayered pigment based on SiO.sub.2 flakes, glass flakes, or TiO.sub.2flakes, and, optionally, one or more solvents and/or conventional additives.

"and, optionally, one or more solvents and/or conventional additives"??

Is it just me, or does that pretty much violate every guideline in the books about claim definiteness?  I mean, using a conditional like "if no response is received, then ..." gets torn apart by examiners routinely because it dares to use the word "if".

[Jonathan]

Doesn't look like the optional part of that claim caused any trouble at all in the prosecution of this application.

[JimIvey]

I don't see a problem with "if" in a claim.  It's an English word with a well-understood meaning.  I know others, including a number of examiners, disagree with me.

I would expect the examiner to view the claim as if the optional portion isn't there.

Whether including the optional language is a wise decision (rather than merely legally defensible) is another question.

Regards.

[Wiscagent]

Sometimes an "optionally" phrase is used to establish antecedent basis for a dependent claim.  It's  uncommon, but not an extremely rare approach, especially in chemical claims. E.g.: 
   1.  A composition comprising A, B, C, and optionally, ice cream.
   2.  The composition of claim 1 wherein the ice cream comprises tutti-frutti.

There are better ways to accomplish the same result, e.g.:
   1.  A composition comprising A, B, and C.
   2.  The composition of claim 1 further comprising tutti-frutti ice cream.

[MYK]

Well, I guess I was wrong then.  I thought that sort of language was grounds for a serious spanking.  That's the wonderful thing about patentology -- learn something new every day.

[Robert K S]

There's nothing indefinite about this claim.  It clearly says "optionally".  That word could not be mistaken by a person skilled in the art to mean anything other than "You don't need this part, and you can read the claim without it."

I would more question 103 allowability.  If PVOH pigment shells are known (are they?  I don't know) and pearlescent pigments are known (are they?  I don't know), why would it not be obvious to put that particular kind of pigment in that particular kind of shell?

[bald & chained]

why do some people put in "and/or" in claims?  Does it add anything, aside from confusion, to a regular "or"?

[JimIvey]

Sometimes an "optionally" phrase is used to establish antecedent basis for a dependent claim.  It's  uncommon, but not an extremely rare approach, especially in chemical claims. E.g.: 
   1.  A composition comprising A, B, C, and optionally, ice cream.
   2.  The composition of claim 1 wherein the ice cream comprises tutti-frutti.

There are better ways to accomplish the same result, e.g.:
   1.  A composition comprising A, B, and C.
   2.  The composition of claim 1 further comprising tutti-frutti ice cream.

I agree that the latter set of claims is better.  In the former set, it looks like claim 2 still doesn't require ice cream and therefore renders any limitations of the ice cream added by claim 2 superfluous.  In other words, I don't see claim 2 being any narrower than claim 1 in the first set.

why do some people put in "and/or" in claims?  Does it add anything, aside from confusion, to a regular "or"?

In ordinary usage, "or" is not exclusive (means the same as "and/or") -- though try explaining that when the menu says "served with your choice of french fries or fruit."  In a claim, when so much hangs on such subtleties of language, it's best to be absolutely clear whether "or" is exclusive or not.

I prefer the standard from of "one" or "one or more" "selected from the group consisting of:...."  That makes the exclusivity clear.

Regards.

[bald & chained]

why do some people put in "and/or" in claims?  Does it add anything, aside from confusion, to a regular "or"?

In ordinary usage, "or" is not exclusive (means the same as "and/or") -- though try explaining that when the menu says "served with your choice of french fries or fruit."  In a claim, when so much hangs on such subtleties of language, it's best to be absolutely clear whether "or" is exclusive or not.

I prefer the standard from of "one" or "one or more" "selected from the group consisting of:...."  That makes the exclusivity clear.

Regards.

I am not even sure that "and/or" actually means "non-exclusive or."  Looks like it can mean a number of things, really - http://languagelog.ldc.upenn.edu/nll/?p=47.  Given the inherent ambiguity of this term, it's probably best to not use it in claims at all.

[Yak]

I have also read instances where and/or was used in an attempt to cover both alternatives, that the litigation attorney argued that and/or is meant as "and" or "or" and used the "and" as a limitation that drafter did not intend.  I do not think that was a patent claim interpretation case, however, the analogy seems sound. 

A device comprising: A, B, or C, or a combination thereof. 
A device comprising: A or B, or both. 

[JimIvey]

Given the inherent ambiguity of this term, it's probably best to not use it in claims at all.

I'll second that. 

To me, and/or means non-exclusive "or."  But apparently not everyone agrees with me, so it gets put on the "banned in claims" list.  That could probably be said for any term that includes two or more terms concatenated with a somewhat vague forward slash, as in "I'm taking the car/bus/boat to the grocery/electronics store and I'll be back in 1/2/24 minutes/hours/days."

Regards.

[klaviernista]

U.S. 7,479,323
"and, optionally, one or more solvents and/or conventional additives"??

Is it just me, or does that pretty much violate every guideline in the books about claim definiteness?  I mean, using a conditional like "if no response is received, then ..." gets torn apart by examiners routinely because it dares to use the word "if".

I can ask Hoa (examiner Le) for you if you like.  Eon's ago, she and I were in the same art unit at the PTO.  I imagine there are some patents with my name on them that include "optional" language as well.

In principal, there is nothing wrong with reciting an optional component in a U.S. patent claim, provided that it does not render the claim indefinite.  And in my opinion, the "optional" language does not render the claim you quoted indefinite. 

That said, without looking at the specification it does appear that the scope of the claim is quite unclear.  The basic element of the claim is an effect pigment coated with polyvinyl alcohol.  The question I have is what role does the solvent play?  Is it coated on the pigment (e.g., as a solvent for the PVOH)?  Or is it a solvent for a plurality of coated pigments?  If the latter, the claim would be indefinite in my opinion because the preamble ("an encapsulated p[igment") would make no sense in the context of the body of the claim (which defines a slurry or dispersion of particles).

And FWIW, "optional" language is frequently used in pharma/small molecule claims, without issue. 

[smgsmc]

U.S. 7,479,323
"and, optionally, one or more solvents and/or conventional additives"??

Is it just me, or does that pretty much violate every guideline in the books about claim definiteness?  I mean, using a conditional like "if no response is received, then ..." gets torn apart by examiners routinely because it dares to use the word "if".

I can ask Hoa (examiner Le) for you if you like.  Eon's ago, she and I were in the same art unit at the PTO.  I imagine there are some patents with my name on them that include "optional" language as well.

In principal, there is nothing wrong with reciting an optional component in a U.S. patent claim, provided that it does not render the claim indefinite.  And in my opinion, the "optional" language does not render the claim you quoted indefinite. 

That said, without looking at the specification it does appear that the scope of the claim is quite unclear.  The basic element of the claim is an effect pigment coated with polyvinyl alcohol.  The question I have is what role does the solvent play?  Is it coated on the pigment (e.g., as a solvent for the PVOH)?  Or is it a solvent for a plurality of coated pigments?  If the latter, the claim would be indefinite in my opinion because the preamble ("an encapsulated p[igment") would make no sense in the context of the body of the claim (which defines a slurry or dispersion of particles).

And FWIW, "optional" language is frequently used in pharma/small molecule claims, without issue. 

But what does putting "optional" elements in the independent claim buy you?  Other than reducing potential excess claims fees, that is.  I think Wiscagent's approach (putting the optional elements in a dependent claim) is much cleaner.

[klaviernista]

[quote author=smgsmc link=topic=15010.msg74799#msg74799 date=1281480222
But what does putting "optional" elements in the independent claim buy you?  Other than reducing potential excess claims fees, that is.  I think Wiscagent's approach (putting the optional elements in a dependent claim) is much cleaner.
[/quote]

I agree that Wisc's approach is cleaner.  The only reason that strategy is used in small molecule cases is because the number of species/dependant claims can be extremely large.  So optional elements are a way of "fleshing" out claims to a certain class of compounds without having to spend the dough on 50-100 dependent claims.  I've never used optional language in a materials case, so I can't comment in that context. Well, other than to say that the strategy seems to be used in that area quite a bit.

[petethebody]

Whether

• is a wise decision (rather than merely legally defensible) is another question.

I've heard this somewhere else recently, but where?  Sorry to jump the shark.