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[Wiscagent]

Yesterday I wrote:

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

That's based on Landis on Mechanics of Patent Claim Drafting by Faber.  In sec. 6.2 Faber writes:
   Rather than using "selected from the group consisting of", one can simply list the
   group members, with "or" preceding the final member.
- and -
   When materials recited in a claim are so related as to constitute a proper Markush
   group, they may be recited in the conventional [Markush] manner, or alternatively.  For
   example, if "wherein R is a material selected from the group consisting of A, B, C, and D"
   is a proper limitation, then "wherein R is A, B, C or D" shall also be considered proper.
- and -
   Under this modification [...] one could recite a "stripe of copper, silver or aluminum ...."
   This is much simpler and covers the same thing as the regular (Markush) group.

If you agree with Faber (and me) then:
   Claim 1. A paint composition comprising I, II, III, and a pigment selected from
   the group consisting of A, B, C, and mixtures thereof.
is equivalent to
   Claim 2. A paint composition comprising I, II, III, and a pigment, wherein the
   pigment is A, B, or C.

And presumably you would agree that adding pigment D to a paint composition that infringes claim 2 does not avoid infringement.  Then claim 1 could not be engineered around by adding pigment D.

[DogDayPM 9er9er9er]

Yesterday I wrote:

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

That's based on Landis on Mechanics of Patent Claim Drafting by Faber.  In sec. 6.2 Faber writes:
   Rather than using "selected from the group consisting of", one can simply list the
   group members, with "or" preceding the final member.
- and -
   When materials recited in a claim are so related as to constitute a proper Markush
   group, they may be recited in the conventional [Markush] manner, or alternatively.  For
   example, if "wherein R is a material selected from the group consisting of A, B, C, and D"
   is a proper limitation, then "wherein R is A, B, C or D" shall also be considered proper.
- and -
   Under this modification [...] one could recite a "stripe of copper, silver or aluminum ...."
   This is much simpler and covers the same thing as the regular (Markush) group.

If you agree with Faber (and me) then:
   Claim 1. A paint composition comprising I, II, III, and a pigment selected from
   the group consisting of A, B, C, and mixtures thereof.
is equivalent to
   Claim 2. A paint composition comprising I, II, III, and a pigment, wherein the
   pigment is A, B, or C.

And presumably you would agree that adding pigment D to a paint composition that infringes claim 2 does not avoid infringement.  Then claim 1 could not be engineered around by adding pigment D.

Rich, I followed everything down to the last bit, which to me still seems to go astray.  Take your "Paint composition comprising some elements and a pigment, and wherein the pigment is A, B, or C (or mixtures of)".

A paint wherein the pigment is {A + non-recited D} does not meet the requirement of "pigment is A, B, C, or mixtures thereof".

So a paint wherein the pigment is {A + non-recited D} does not anticipate the claim, and does not infringe it.

[JimIvey]

So a paint wherein the pigment is {A + non-recited D} does not anticipate the claim, and does not infringe it.

Well, I would expect a examiner to say otherwise, but I agree with you.

On the other hand, "wherein the pigment includes A, B, or C" would be different.  That would be equivalent to "where the pigment includes at least one selected from a group consisting of A, B, and C."  "Includes" is synonymous with "comprises", from what I understand.

Regards.

[MYK]

So a paint wherein the pigment is {A + non-recited D} does not anticipate the claim, and does not infringe it.

Well, I would expect a examiner to say otherwise, but I agree with you.

On the other hand, "wherein the pigment includes A, B, or C" would be different.  That would be equivalent to "where the pigment includes at least one selected from a group consisting of A, B, and C."  "Includes" is synonymous with "comprises", from what I understand.

Yeah.  Ok, now I do understand.  Thanks!