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[Memo]

When drafting patent claims, does using the term "including" in a claim limit your patent coverage or is it just used as one of a plurality of examples.  For example, if I write "system connected via one or more wire line and/or wireless networks including the Internet" am I limiting my claim to use of the Internet as the network or just saying that is one example? 

If I write "... via one or more wire line and/or wireless networks including virtual private networks, local networks, and/or the Internet" am I specifying that those three examples need to be used in the claimed matter or is this again, just an example. 

I can always just say network or wire line and wireless network.  Pros and cons of providing further specificity would be greatly appreciated.

Thanks all

[DogDayPM 9er9er9er]

When drafting patent claims, does using the term "including" in a claim limit your patent coverage or is it just used as one of a plurality of examples.  For example, if I write "system connected via one or more wire line and/or wireless networks including the Internet" am I limiting my claim to use of the Internet as the network or just saying that is one example? 

If I write "... via one or more wire line and/or wireless networks including virtual private networks, local networks, and/or the Internet" am I specifying that those three examples need to be used in the claimed matter or is this again, just an example. 

I can always just say network or wire line and wireless network.  Pros and cons of providing further specificity would be greatly appreciated.

Thanks all

I think you may be asking the wrong question if you are drafting for US consumption.  In my view the question is, "Will I be allowed to do this?". 

And I think the answer is no, not if you're intending to file this application in the US.  In the EPO, exemplaries or even preferences can be stated in the claims, but in the US you'll usually get complaints that your claim is not definite.

Put all of your exemplaries in your specification, but for an independent claim, I'd use only "...system connected via one or more wire line networks and/or wireless networks".  Then in dependent claims, if you wish, you can specify narrower examples along the lines of "The thingie of claim 1 wherein the one or more networks are selected from the group consisting of virtual private networks, local networks, and the Intertoobs."

That's just my $0.02.

[Yak]

Is "and/or" language acceptable in claims?  Or was that just hypo wording and not meant to be claim wording?

[khazzah]

"system connected via one or more wire line and/or wireless networks including the Internet" am I limiting my claim to use of the Internet as the network or just saying that is one example? 

Words in claims are never considered to be "examples". Words in claims are instead *limiting* -- with few exceptions, in the context of preambles and intended use.

However, that kind of fuzzy language is very common in a patent specification. Some folks love to pile on the fuzzy modifiers:

"For example, in various embodiments the widget could be made of various materials such as, steel, aluminum, etc. However, the widget is not limited to those examples. "

As a side note, "including" is a term of art in patent claims. It's a transition word with a specific meaning. Other transition words are: comprising; consisting; consisting essentially of; having.

As another side note, you are probably asking for trouble if you put "and/or" in a claim. It's not per se indefinite, but even if the Examiner doesn't complain, the Board of Appeals might, and I can guarantee the accused infringer will make a big deal out of it.

[JimIvey]

system connected via one or more wire line and/or wireless networks including the Internet

That's really sloppy language for a claim.  "Includ[e/es/ing]" in a claim is synonymous with compris[e/es/ing]", although some prefer that "comprising" appears once and first in a claim and "including" thereafter.

It means that the thing includes at least what is expressly described as being "included" and can include other things.  Absolutely, positively, no "for example" language in claims, ever!

Regards.

[Memo]

Thanks everybody.  That was very helpful.  My examiner for this particular patent said he takes the most limiting case with regard to the "and/or" language.  Kazzah, why do you say it's a potential problem and what do you otherwise suggest I use: and, or, or what other language? 

To provide another example, I'm using "and/or" because someone might access a user interface via a Web, WAP, and/or mobile application.  He or she could use all three or just one of the three or each one at different times and I don't want to claim that it's limited to only one.  I've also used it for combinations like integration methods where somebody might integrate two systems over a network using several individual methods or combinations of the aforementioned methods listed.  Same thing for uploading data from a series of primary databases.  I've listed the data sources and used "and/or" because someone can implement the system and pull data from all of them, some of them, or only one of them.  Yak seems to want some clarification on this as well so thanks again for the help and suggested alternatives. 

[Yak]

Regarding the and/or debate, I have read case law (granted it was not patent related) where and/or language had been hotly contested by an opposing party during litigation.  I have also read, possibly here, where an opposing party will argue that since "and" and "or" were used either one are legitimate limiting terms contemplated by the patent drafter and that the patent should be interpreted using the limiting "and".  Also that since "or" by definition is nonexclusive that it is not necessary to use both.  I have tended to avoid "and/or" language in anything I write, but I am not sure if this is based on any legitimate justification or just my aversion to using "/". 

I admittedly have pretty limited patent drafting experience, but I would probably have drafted that claim as:
"...via one or more wire line or wireless networks or both, including virtual private networks, local networks, or the Internet or any combination thereof"
 

[khazzah]

Kazzah, why do you say [and/or in a claim] is a potential problem

With regard to being a problem with Examiners, personal and anecdotal experience.

With regard to being an issue raised in litigation, I've read cases where and/or is an issue. [Nope, don't have a cite handy.] And I've been involved in enough file history reviews to know and/or is a red flag.

what do you otherwise suggest I use: and, or, or what other language?

No rigid rule. Depends on what you're trying to express in the claim.

For example, if the items in your list are mutually exclusive, OR is appropriate and won't be unnecessarily limiting (ie, mutually exclusive already limits you).

If the items are not mutually exclusive, COMPRISES might do the trick. "wherein the LAN comprises Ethernet, 802.11, 802.5, 802.3, or WiFi". Then again, the better approach is probably to rethink what you're trying to do -- maybe your categories shouldn't overlap like that.

I'm using "and/or" because someone might access a user interface via a Web, WAP, and/or mobile application.

That's an example of what I'm talking about when I say "maybe your categories shouldn't overlap". Web access = HTTP. AFAIK, WAP is an alternative to HTTP, and thus WAP and HTTP are mutually exclusive. But neither Web nor WAP has nothing to do with whether the client is mobile or fixed.

So maybe you shouldn't try to cover all these different aspects in the same claim.

[orangequant]

i know almost nothing about non-US filing and EPO, but i do recall that "and/or" is verboten for contracts in English courts... so if England is part of EPO, and if you plan an EPO filing, "and/or" could spell "trouble"

[Wiscagent]

If I write "... via one or more wire line and/or wireless networks including virtual private networks, local networks, and/or the Internet" am I specifying that those three examples need to be used in the claimed matter or is this again, just an example.

In most situations
... comprising at least one of A, B, and C... or
... comprising at least one selected from the group consisting of A, B, and C ...
captures the and/or concept without ambiguity.

Markush groups.  They're not just for chemistry any more.

[Memo]

That was very helpful.  Thanks everybody!

[orangequant]

...In most situations
... comprising at least one of A, B, and C... or
... comprising at least one selected from the group consisting of A, B, and C ...
captures the and/or concept without ambiguity.
Markush groups.  They're not just for chemistry any more.

i'm sure you meant, as an expert, "consisting" of, for that Markush, or have they changed the rules AGAIN???
FROM:
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_h.htm
"It is improper to use the term "comprising" instead of "consisting of." Ex parte Dotter, 12 USPQ 382 (Bd. App. 1931)."

[Wiscagent]

What I wrote, with different emphasis, was

In most situations
... comprising at least one of A, B, and C... or
... comprising at least one selected from the group consisting of A, B, and C ...
captures the and/or concept without ambiguity.

The section in bold is taken, verbatim, from MPEP 2173.05(h) Alternative Limitations - I.    Markush Groups.  But it would have been more clear, had I written:
- - - - - - - - - - - - - - - - - - - - - -
In most situations, The composition comprising ...
... at least one of A, B, and C...
   - or -
... at least one selected from the group consisting of A, B, and C ...
captures the "and/or" concept without ambiguity.
- - - - - - - - - - - - - - - - - - - - -
Thanks for the opportunity to clarify my remark.

[smgsmc]

What I wrote, with different emphasis, was

In most situations
... comprising at least one of A, B, and C... or
... comprising at least one selected from the group consisting of A, B, and C ...
captures the and/or concept without ambiguity.

The section in bold is taken, verbatim, from MPEP 2173.05(h) Alternative Limitations - I.    Markush Groups.  But it would have been more clear, had I written:
- - - - - - - - - - - - - - - - - - - - - -
In most situations, The composition comprising ...
... at least one of A, B, and C...
   - or -
... at least one selected from the group consisting of A, B, and C ...
captures the "and/or" concept without ambiguity.
- - - - - - - - - - - - - - - - - - - - -
Thanks for the opportunity to clarify my remark.

Hi, Wisc and others.  I'd like to revisit the first construction.  One quote from the MPEP is


When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional 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.

The question then arises as to the proper interpretation of

"The composition comprising at least one of A, B, and C"

I was taught that this phrasing meant a minimum of one element [that one element can be an A, a B, or a C, doesn't matter]

An in-house counsel, however, recently disagreed and stated that


"The composition comprising at least one of A, B, and C"

requires a minimum of three elements [one A, one B, and one C].  And I can see how the claim could be interpreted as such. 

According to the in-house counsel, the proper phrasing when a minimum of one element is intended is

"The composition comprising at least one of A, B, or C"

which would appear to be in accord with the MPEP. 

When I brought this up to a colleague, he also was no longer sure.  I'm beginning to think it's best to stick to the full formal Markush language.  What is your take?  Thanks.

[Monkey1]

I have seen and used "A, B, C, or any combination thereof".  Does anyone see problems with that?