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[TaiwanIP]

I would like to be able to cite a rule or statute that discusses indefiniteness with respect to "and/or" in claims. Can anyone point me in the right direction? I couldn't find it here: 
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_h.htm
Is it perhaps so evident to all that this is indefinite that there is no explicit mention of "and/or" in the rules or statutes?
I was planning on using A, B, and optionally C to fix this, by the way. For the claims I'm looking at I think this would leave no ambiguity as to which alternatives are being covered.

[khazzah]

I would like to be able to cite a rule or statute that discusses indefiniteness with respect to "and/or" in claims.

Neither the patent statues nor the C.F.R. are this specific about indefiniteness. I'm not aware of any specific language in the MPEP that prohibits "and/or". And I don't even know of a case directly on point.

I was planning on using A, B, and optionally C to fix this, by the way. For the claims I'm looking at I think this would leave no ambiguity as to which alternatives are being covered.

If you're talking about putting "A, B, and optionally C" in the *claims*, I think Examiners would see this as even *more* indefinite. I think even I see this as indefinite.

Can you give a little more context, as to what types of things A, B, and C are? Are they related at all? 

If you're trying to say that A and B are definitely required and C is not, then you could leave C out of the base claim and have a dependent claim that (positively) adds C.

[JimIvey]

From what I understand, "and/or" means "or".  It shouldn't be a problem for vagueness.  If the examiner complains, change it to "or".

Now, there might be other problems with "or" -- primarily that it's easier to reject.

The best way to claim "A, B, and optionally C" is this:

1.  something comprising: A and B.

2.  the something of claim 1 further comprising: C.

Generally speaking, breaking up limitations into multiple claims is the best way to reflect "or" in the claims.

Regards.

[TaiwanIP]

Neither the patent statues nor the C.F.R. are this specific about indefiniteness. I'm not aware of any specific language in the MPEP that prohibits "and/or". And I don't even know of a case directly on point.

I was planning on using A, B, and optionally C to fix this, by the way. For the claims I'm looking at I think this would leave no ambiguity as to which alternatives are being covered.

If you're talking about putting "A, B, and optionally C" in the *claims*, I think Examiners would see this as even *more* indefinite. I think even I see this as indefinite.

Can you give a little more context, as to what types of things A, B, and C are? Are they related at all? 

If you're trying to say that A and B are definitely required and C is not, then you could leave C out of the base claim and have a dependent claim that (positively) adds C.

Thanks for your input. This is all good information. This is a case related to a chemistry composition. This is NOT my area so I don't feel too confident discussing things...but here we go. First of all, it's good to know that "and/or" is okay. Turning to my situation, there was an indefinite rejection related to one recitation of "and/or" but not because of the "and/or" per se. It was something like this: A composition comprising A, B and/or C, wherein the composition has an amount of B ranging from 5-10% by weight in the composition. The examiner pointed out (correctly in my opinion) that you cannot have B optionally then state a required amount of B. The client wants to change this to "A, B and optionally C." This is clear and solves the problem, doesn't it? And the MPEP seems to be saying here http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_h.htm (scroll to the bottom of the page) that "optionally" is perfectly acceptable in some circumstance.

The best way to claim "A, B, and optionally C" is this:
1.  something comprising: A and B.
2.  the something of claim 1 further comprising: C.

Generally speaking, breaking up limitations into multiple claims is the best way to reflect "or" in the claims.

I'm going to tell the guy who wrote the claims exactly this!   

[thwalls]

From what I understand, "and/or" means "or".  It shouldn't be a problem for vagueness.  If the examiner complains, change it to "or".

Now, there might be other problems with "or" -- primarily that it's easier to reject.

The best way to claim "A, B, and optionally C" is this:

1.  something comprising: A and B.

2.  the something of claim 1 further comprising: C.

Generally speaking, breaking up limitations into multiple claims is the best way to reflect "or" in the claims.

Regards.

I absolutely agree with this and wrote a similar set of claims last week.  Even though I've only been doing this job for about a year, I've found that just because the rules MIGHT allow something, that doesn't mean the Examiner will interpret it that way and hand you an objection for your trouble.  I'd rather be as clear as possible from the get-go.

[JimIvey]

Even though I've only been doing this job for about a year, I've found that just because the rules MIGHT allow something, that doesn't mean the Examiner will interpret it that way and hand you an objection for your trouble.  I'd rather be as clear as possible from the get-go.

It's well worth-while to go beyond just what might get past the examiner.  The real test of a patent/claim is enforcement in court (or the implicit threat of such during licensing negotiations).

The best analogy I can think of is that of experimental aircraft -- not truly "experimental" but rather home-built (as in the "experimental" exception to the requirement that aircraft designs be certified).  You build and build and build....  Then an FAA inspector comes by and decides whether you did well enough that they'll let you fly it. 

As an aside for the libertarians out there who might see this as unacceptable governmental intrusion on the rights of individuals, consider that your neighbor might build an experimental aircraft and decide to do some really exciting aerobatics right over your house.  I'd like to have some assurance that there's more than duct tape holding the wings on.

Getting the certificate to fly your home-built plane is like getting your patent issued.  However, the real test is actually flying the thing.  Having your plane withstand the challenges of weather, wind-shear, etc. is analogous to having your patent withstand challenge in court (or to discourage challenge in the first place).

Regard.

[SoCalProductDev]

Getting the certificate to fly your home-built plane is like getting your patent issued.  However, the real test is actually flying the thing.  Having your plane withstand the challenges of weather, wind-shear, etc. is analogous to having your patent withstand challenge in court (or to discourage challenge in the first place).

Ya know... I'm building an experimental aircraft but haven't worked on it in a long time.  I'm suddenly reminded that I should get to work on converting my "project" into a flying machine that can carry 4 people 200 MPH  Now suddenly the two types of forums I follow have merged in subject material.  Intellectual property and experimental aviation.  Cool.

[JimIvey]

I'm suddenly reminded that I should get to work on converting my "project" into a flying machine that can carry 4 people 200 MPH 

Cool.  What kind?  RV-10?

Some day, I'd love to take on building an Aerocomp 7 (piston).

Years ago, my flight instructor asked (in the mid 1990s in the Silicon Valley, wild times), "What is it with patent attorneys?  I have so many of them as students now."  I said, "We're geeks with money.  What do you expect?"

Regards.

[SoCalProductDev]

Cozy Mark IV

[klaviernista]

If you're talking about putting "A, B, and optionally C" in the *claims*, I think Examiners would see this as even *more* indefinite. I think even I see this as indefinite.

In the chemical context, "optional" limitations are used quite frequently.  And if done correctly, they should not introduce any 112(2) issues.  A composition comprising A, B, and optionally C is not indefinite.  It means that A is required, B is required, and C may or may not be present. 

That said, I agree with Jim that the best way to claim A, B, and optionally C is to recite C in a dependent claim.  The problem is in the chemical context, following that strategy will often lead to an enormous number of claims.  This is particularly true when claiming new chemical entities (NCE's), where the invention is often in the a base molecule, and the base molecule can have a wide variety of substituents.  If you claim each substitutent or combination of substitutents individually, you could easily write 100-1000 claims or more for some NCE applications.  This greatly increases the filing costs in the U.S., and around the world.  Indeed, at my old employer, I filed numerous NCE cases where the fee for extra claims was 10X the base filing and examination fee.

In sum, avoiding the use of "optional" language is best where possible.  But if it must be used, there are ways to do so without introducing 112(2) issues. 
Here are a few of the 26,400 results of a google patent search for "pharmaceutical composition optionally comprising":

http://www.google.com/patents?id=Zx_WAAAAEBAJ&pg=PA6&dq=pharmaceutical+composition+optionally+comprising&hl=en&ei=HjQDTtbOJcrZgAf32LXyDQ&sa=X&oi=book_result&ct=result&resnum=1&ved=0CCwQ6AEwAA#v=onepage&q=pharmaceutical%20composition%20optionally%20comprising&f=false

http://www.google.com/patents?id=PG3RAAAAEBAJ&pg=PA3&dq=pharmaceutical+composition+optionally+comprising&hl=en&ei=HjQDTtbOJcrZgAf32LXyDQ&sa=X&oi=book_result&ct=result&resnum=7&ved=0CDgQ6AEwBg#v=onepage&q=pharmaceutical%20composition%20optionally%20comprising&f=false

http://www.google.com/patents?id=QXHOAAAAEBAJ&pg=PA22&dq=pharmaceutical+composition+optionally+comprising&hl=en&ei=HjQDTtbOJcrZgAf32LXyDQ&sa=X&oi=book_result&ct=result&resnum=6&ved=0CDYQ6AEwBQ#v=onepage&q=pharmaceutical%20composition%20optionally%20comprising&f=false

[klaviernista]

A composition comprising A, B and/or C, wherein the composition has an amount of B ranging from 5-10% by weight in the composition.

One way of dealing with the issues raised by the examiner re: the quoted language would be to rewrite it as follows:

A composition comprising at least one compound selected from the group consisting of A, B, C, and combinations thereof, wherein if the composition comprises B, B is present in an amount ranging from about 5 to about 10% by weight, relative to the total weight of the composition.

[TaiwanIP]

A composition comprising at least one compound selected from the group consisting of A, B, C, and combinations thereof, wherein if the composition comprises B, B is present in an amount ranging from about 5 to about 10% by weight, relative to the total weight of the composition.

I really like the way that sounds. I'll pass this along to the person who drafted the claims.