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[Lost&Confused]

I am looking at the following abbreviated claim:

A paint composition comprising:
  . . .
  a pigment, said pigments is selected from the group consisting of A, B, C, mixtures thereof;
  . . .


Based on that claim would a paint that contains A and D (D being a pigment not selected in the Markush group) be infringing?

Thanks for your help.

[JimIvey]

No.  "consisting of" means that the group of A, B, C, and mixtures thereof is a closed group.

Regards.

[Lost&Confused]

Interesting, I was concerned that the preamble "comprising" would allow other pigments when used in addition to the ones listed in the markush claim.

[TataBox]

Interesting, I was concerned that the preamble "comprising" would allow other pigments when used in addition to the ones listed in the markush claim.

Provided the infringer is using the elements in your claim, they are still infringing.  It does not matter that they may be using "additional" elements outside your patent.

[Lost&Confused]

Provided the infringer is using the elements in your claim, they are still infringing.  It does not matter that they may be using "additional" elements outside your patent.

Wait that seems to be contradictory to JimIvey's response.

If we say that D is a pigment not included in the Markush group and A is a pigment included in the Markush group.

Would a paint that contains A and D be infringing?

TataBox, you seem to be saying that it would be.  However doesn't the use of "consisting of" to define "a pigment" create a closed-ended group that excludes the use of any other pigments.  Even if those pigments are used in addition to A,B, or C?

[DogDayPM 9er9er9er]

I think TataBox may have read through the scenario too quickly.  If D is a pigment, then articles including pigment D are outside of the scope of the claim because the claim is limited (via the "consisting of" language) to use of only those pigments included in the Markush group.

An exception would be a sham attempt by a copyist.  For example, using any of your pigments A-C plus using a micro amount of pigment D which is added only to try to say they are not infringing; I think there the copyist may still be infringing.  Maybe literally, but more likely under the Doctrine of Equivalents.

[JimIvey]

The pigment element of the claim must include A, B, C, or some combination thereof and nothing else (except arguably trace amounts of other stuff as DDPM said).

The comprising in the preamble means that adding other elements beyond those recited (including the pigment element) does not avoid infringement.

Think of it this way:  put a check box by each and every element of the claim.  Using "comprising" in the preamble means that anything ("accused device") with all boxes checked infringes, even if there are other things in the accused device.

However, if the accused device's pigment element includes more than A, B, or C (i.e., D), you cannot check the pigment element check box because of the "consisting of".

I hope that helps.

Regards.

[MYK]

Hmm.  So if I take a paint that is infringing, and add some of Pigment D to it, then it becomes non-infringing?? 

[Lost&Confused]

Hmm.  So if I take a paint that is infringing, and add some of Pigment D to it, then it becomes non-infringing?? 

I agree it sounds suspect.  I am still looking into it, but I did come across one case that seems to suggest that this is correct.  See Dow Agrosciences LLC. v. Cromption Corp., 182 Fed.Appx. 978, 985,  2006 WL 1308584, *4-5 (C.A.Fed. 2006)

[Wiscagent]

Jim,

Are you sure you're correct on that?  I see the logic of your argument, but I interpret the claim differently. 

The claim is:  A paint composition comprising I, II, III, and a pigment selected from the group consisting of A, B, C, and mixtures thereof.

The Markush group, consisting of A, B, C, mixtures thereof, is exactly equivalent to the phrase:  comprising A, B or C.  Certainly if the alternate wording were used, the claim would read on a composition that included I, II, III, and pigments A + D.

The term consisting is required in a Markush group so that at least one of A, B, or C is required, i.e. it is a closed group.   If the term comprising were used, then the group would be open-ended and any pigment could be used; and A, B, and C would just be examples.  So the Markush group ensures that A, B or C is in the composition, but the consisting does not extend to the entire claim.

[JimIvey]

Jim,

Are you sure you're correct on that?  I see the logic of your argument, but I interpret the claim differently. 

Pretty sure.

The claim is:  A paint composition comprising I, II, III, and a pigment selected from the group consisting of A, B, C, and mixtures thereof.

The Markush group, consisting of A, B, C, mixtures thereof, is exactly equivalent to the phrase:  comprising A, B or C.  Certainly if the alternate wording were used, the claim would read on a composition that included I, II, III, and pigments A + D.

Are you saying that "a pigment selected from the group consisting of A, B, C, and mixtures thereof" is equivalent to "a pigment selected from the group comprising A, B, or C"?

I don't believe that to be correct.  I believe that element is fatally vague.  Since the group is open-ended, the group could include D such that pigment of only D could infringe.

Now to reiterate my standard disclaimer that I don't do chemical work.  I took the pigment element literally and wholly.  In other words, I treated the following hypothetical accused concoctions as distinct from one another:

Some accused device that includes ....
pigment A+D;
.... .

Some accused device that includes ....
pigment A;
pigment D;
.... .

I know (from visiting the hardware store and buying paint) that there probably isn't any difference between the two.  However, the "and mixtures thereof" seems to exclude other mixtures (such as A+D).

In the former example above, pigment A+D is not in the original Markush group.  In the latter example above, pigment A is and allows one to check the box by the "pigment" element and pigment D is an extraneous add-on that does not avoid infringement by use of "comprising" in the preamble.

The term consisting is required in a Markush group so that at least one of A, B, or C is required, i.e. it is a closed group.   If the term comprising were used, then the group would be open-ended and any pigment could be used; and A, B, and C would just be examples.  So the Markush group ensures that A, B or C is in the composition, but the consisting does not extend to the entire claim.

Yes, I agree with that much.  That's more or less what I said, isn't it?

Regards.

[dablueman]

The Markush group, consisting of A, B, C, mixtures thereof, is exactly equivalent to the phrase:  comprising A, B or C.

Incorrect.

[MYK]

Hmm.  So if I take a paint that is infringing, and add some of Pigment D to it, then it becomes non-infringing?? 

I agree it sounds suspect.  I am still looking into it, but I did come across one case that seems to suggest that this is correct.  See Dow Agrosciences LLC. v. Cromption Corp., 182 Fed.Appx. 978, 985,  2006 WL 1308584, *4-5 (C.A.Fed. 2006)

Thanks! Trying to read it, but I can't get either LexisNexis or Westlaw to let me sign on at the moment. 

I guess what bothers me about this interpretation is that there are too many pigments to list, and people custom-mix paints all the time.  If someone wants to lighten the color a shade or two, they mix in some TiO2 (ti-di, titanium dioxide), for example.  By the above logic, if ti-di wasn't listed in that Markush group, then any paint using it could not infringe.

And, too, other components of the paint might not be, by their main purpose, a "pigment", but they still contribute to the final color.  Some of the oil-based paints I've seen will always have a tiny yellow tint to them because of the oil.

I guess, in the end, it would be a reason never to use a Markush group whenever avoidable.  

[Lost&Confused]

I know (from visiting the hardware store and buying paint) that there probably isn't any difference between the two.  However, the "and mixtures thereof" seems to exclude other mixtures (such as A+D).

I had no idea this would become such an interesting discussion.  

For clarification, the pigments do not bond chemically.  So I think it might fall into Jim's second example in the prior post.  Which, seems to suggest that the addition of D does not prevent infringement.  Think of if as having a giant tub of clear marbles and adding a few green marbles, pigment A, and a few blue marbles, pigment D.  Does the presence of the blue marbles, exclude infringement because the blue marbles are "a pigment" outside the markush group.

My problem is that i believe the markush group was added to overcome an examiner's rejection based on the use of D in the prior art.  I know I can likely achieve the same result with Prosecution History Estoppel or claim construction.  But, it would obviously be much more certain if claim construction without the need of the file wrapper excluded D.

Trying to read it, but I can't get either LexisNexis or Westlaw to let me sign on at the moment.

Here is the pertinent part. 

The claim stated: “If R2 is a substituted phenyl group, the phenyl group contains at least one substituent chosen from the group consisting of: ...” The Fed Cir. agreed with the district court which found that "this language requires that each and every substituent on a substituted phenyl group must come from the enumerated list."

Now, the decision was not based solely on the language of the clause, but it certainly relied on it.

[TataBox]

I think TataBox may have read through the scenario too quickly.  If D is a pigment, then articles including pigment D are outside of the scope of the claim because the claim is limited (via the "consisting of" language) to use of only those pigments included in the Markush group.

An exception would be a sham attempt by a copyist.  For example, using any of your pigments A-C plus using a micro amount of pigment D which is added only to try to say they are not infringing; I think there the copyist may still be infringing.  Maybe literally, but more likely under the Doctrine of Equivalents.

Yes.  This is correct.  You may still find infringement under the DOE when using the term "consisting," but literally you have excluded all others.