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[blaine235]

Does anyone know if there is any recent caselaw regarding the use of "is" in claims, specifically using "is" with regards to ranges? 

For instance, I am looking into the case when a claim recites "the amount of acid is 10 to 14 weight %," would a competitor be able to get around the claim by having an amount of acid that is below 10 weight % (e.g., 8.6 weight %)? 

Thanks!

[bleedingpen]

Does anyone know if there is any recent caselaw regarding the use of "is" in claims, specifically using "is" with regards to ranges? 

For instance, I am looking into the case when a claim recites "the amount of acid is 10 to 14 weight %," would a competitor be able to get around the claim by having an amount of acid that is below 10 weight % (e.g., 8.6 weight %)? 

Thanks!

This analysis depends largely on whether the "is 10 to 14% weight" limitation was originally written in the claim or added during prosecution. 

[blaine235]

My interpretation was that the drafter chose "is 10 to 14 weight %" and not "is about 10 to about 14 weight %," which would lock the claims into that percentage.  However, I may be wrong. 

Thanks!

[bleedingpen]

My interpretation was that the drafter chose "is 10 to 14 weight %" and not "is about 10 to about 14 weight %," which would lock the claims into that percentage.  However, I may be wrong. 

Thanks!

No. 

An originally drafted claim like this:

A widget comprising:

10 to 14 % by weight of plutonium. 


Can still provide patent coverage via the doctrine of equivalents over a product having 9.8% plutonium.  However, if the 10 to 14% weight limitation was added for patentability purposes during prosecution, then the applicant is specifically limited to 10 to 14% by weight. 

[khazzah]

Does anyone know if there is any recent caselaw regarding the use of "is" in claims, specifically using "is" with regards to ranges? 

For instance, I am looking into the case when a claim recites "the amount of acid is 10 to 14 weight %," would a competitor be able to get around the claim by having an amount of acid that is below 10 weight % (e.g., 8.6 weight %)? 

So your question is really about the absence of a qualifier such as "about" when claiming a range? As opposed to a question about the specific word ("is") used to introduce the range? 

[blaine235]

Originally, I did think that my question centered around the absence of the qualifier "about."  However, I think my question was answered by bleedingpen's second comment that the claimed range (without the "about" qualifier) could still provide coverage in a doctrine of equivalents case.  Essentially my question was whether "is" without the qualifier would escape circumstances involving DOE. 

I apologize for any confusion and appreciate the comments provided. 

[bleedingpen]

I always use "about" before reciting ranges.  I figure this will at least give me an argument to save my ass on DOE analysis if I have to amend the independent claim to recite ranges.

For example:

Claim 1.  A widget comprising plutonium.

Claim 2.  The widget of claim 1, wherein the widget comprises between about 10% and about 20% plutonium. 

Let's say claim 2 is indicated allowable if amended into claim 1. 

So I amend claim 2 into claim 1.  Claim 1 now reads:

Claim 1 (Amended).  A widget comprising between about 10% and about 20% plutonium. 


So the accused infringer uses 9.8% plutonium.  I can argue literal infringement of my issued claim 1 since I used the "about" modifier in the originally written claim.  I may not win the day on that argument, but at least it gives me something.  If I had not used "about" in the original claims, I would be absolutely dead in the water arguing DOE. 

Any thoughts from others?

[JimIvey]

I always use "about" before reciting ranges.  I figure this will at least give me an argument to save my ass on DOE analysis if I have to amend the independent claim to recite ranges.

For example:

Claim 1.  A widget comprising plutonium.

Claim 2.  The widget of claim 1, wherein the widget comprises between about 10% and about 20% plutonium. 

Let's say claim 2 is indicated allowable if amended into claim 1. 

So I amend claim 2 into claim 1.  Claim 1 now reads:

Claim 1 (Amended).  A widget comprising between about 10% and about 20% plutonium. 


So the accused infringer uses 9.8% plutonium.  I can argue literal infringement of my issued claim 1 since I used the "about" modifier in the originally written claim.  I may not win the day on that argument, but at least it gives me something.  If I had not used "about" in the original claims, I would be absolutely dead in the water arguing DOE. 

Any thoughts from others?

First, let me toss out the caveat that I don't do chemistry and, accordingly, almost never deal with ranges.  Of course, ranges are the poster child for DoE and is the precise fact situation in Festo.  And, this is good for me because I'm working on a case in which ranges are probably the only way to go.

Before I get into it, let me put the alternative, hypothetical claims here:

Claim 1.  A widget comprising plutonium.

Claim 2.  The widget of claim 1, wherein the widget comprises between 10% and 20% plutonium. 

Let's say claim 2 is indicated allowable if amended into claim 1. 

So I amend claim 2 into claim 1.  Claim 1 now reads:

Claim 1 (Amended).  A widget comprising between 10% and 20% plutonium.

I want to say that the amendment is not narrowing and DoE is therefore still available.  But I think that's contrary to Honeywell (I hope that's the right case).

However, I would wager that the spec would support this amendment:

Claim 1 (Amended).  A widget comprising between about 10% and about 20% plutonium.

My approach to DoE is generally to draft applications and claims as if it doesn't exist and then just hope it will be there to save my posterior portions in the event of human fallibility.

Regards.

P.S.  In case it's not clear, I convinced myself that you're right.

[Simpletown]

Do people use this same reasoning when claiming methods?

Say I claim:

1. A method of inflating a tire, wherein the tire is inflated for 20 to 30 seconds.

First, can I still catch infringers outside this claim that inflate for 31 seconds, or would I lose? They had to infringe in order to get there. If I can't get them if they inflate for longer, would DOE work the same for this type of range?

This discussion just made me recognize that I treat physical ranges (i.e. compositions) as if they recite consisting type language. It appears that everyone, even the PTO agrees that these ranges don't need to recite consisting to be relatively closed, yet DOE still allows wiggle room. Does this same system work for ranges of time, or ranges in which someone could possibly start out not infringing the claim, go through a range where they have to infringe, and then come out on the other side. I'm thinking things like power levels, temperatures, times, pressures. 

Anyone ever seen any cases pertaining to this?

[Wiscagent]

Claim 1 now reads:

Claim 1 (Amended).  A widget comprising between about 10% and about 20% plutonium. 


So the accused infringer uses 9.8% plutonium.  I can argue literal infringement of my issued claim 1 since I used the "about" modifier in the originally written claim.  I may not win the day on that argument, but at least it gives me something.  If I had not used "about" in the original claims, I would be absolutely dead in the water arguing DOE. 

That approach makes sense in some situations.  But I’d rather take a couple of steps back and think about why the ranges are needed at all, or why certain ranges were chosen.

If you are aware of a prior art widget that includes 9% Pu, then you have to consider how you would rebut the argument that because 9% was known (and there is probably some suggestion that the Pu level could be increased), 10% Pu would have been obvious … .

If you are not aware of prior art limitations, and the inventor has determined that the practical range for the widget to work as intended is 13%-17%, and the optimum level is 15%, then the approach of claiming nested ranges might make sense:

Claim 1     A widget comprising Pu
Claim 2     The widget of claim 1 comprising 5% to 30% Pu.
Claim 3     The widget of claim 1 comprising 10% to 20% Pu.
Claim 4     The widget of claim 1 comprising 13% to 17% Pu.
Claim 5     The widget of claim 1 comprising about 15% Pu.

In an infringement case, that might avoid a lot of effort trying to pin down “about”.

[Oh, Crud]

Do people use this same reasoning when claiming methods?

Say I claim:

1. A method of inflating a tire, wherein the tire is inflated for 20 to 30 seconds.

First, can I still catch infringers outside this claim that inflate for 31 seconds, or would I lose? They had to infringe in order to get there. If I can't get them if they inflate for longer, would DOE work the same for this type of range?

This discussion just made me recognize that I treat physical ranges (i.e. compositions) as if they recite consisting type language. It appears that everyone, even the PTO agrees that these ranges don't need to recite consisting to be relatively closed, yet DOE still allows wiggle room. Does this same system work for ranges of time, or ranges in which someone could possibly start out not infringing the claim, go through a range where they have to infringe, and then come out on the other side. I'm thinking things like power levels, temperatures, times, pressures. 

Anyone ever seen any cases pertaining to this?

Yes, ranges in methods do get DOE assuming otherwise qualified.  And in your particular example, note a simple change to "about 20 to about 30 seconds" could mean that under the right circumstances, inflation for 31 seconds is literal infringement.

However, I have not thought too much about the "passing through infringement and coming out the other side" concept you mention.  I tend to read a range in a method claim reciting the provision of something for A-Z time, or at 10-25 degrees, or during a pH of 5-9, as meaning infringement only occurs if the provision is done at minimum, the lower part of the range, and at maximum, not higher than the higher part of the range.

In short, I don't think one can infringe by "just passing through" a recited range and coming out the other side of the range.  The upper limit of the range has to be there for a reason and must mean something.

Hope this helps.

[JimIvey]

And in your particular example, note a simple change to "about 20 to about 30 seconds" could mean that under the right circumstances, inflation for 31 seconds is literal infringement.

Just in case it hasn't been mentioned in this topic yet, that sort of uncertainty regarding literal infringement could mean a vagueness problem -- 112, second paragraph.

I understand that "under the right circumstances" doesn't necessarily mean uncertainty but could mean depending on the clarification of the claimed range in the spec and prosecution history.  But still, words like "about" and "substantially" often give rise to 112p2 rejections.

Regards.

[Simpletown]

However, I have not thought too much about the "passing through infringement and coming out the other side" concept you mention.  I tend to read a range in a method claim reciting the provision of something for A-Z time, or at 10-25 degrees, or during a pH of 5-9, as meaning infringement only occurs if the provision is done at minimum, the lower part of the range, and at maximum, not higher than the higher part of the range.

In short, I don't think one can infringe by "just passing through" a recited range and coming out the other side of the range.  The upper limit of the range has to be there for a reason and must mean something.

This is my thinking as well. I had just never thought of it in terms of claiming a duration or something similar before.

I then wondered if perhaps all ranges are treated like consisting type language which would kill DOE in such situations. Sorry to harp on the same topic, I just haven't seen any cases covering this, and it is an odd bit of logic.

First compare these two claims.

1. A method of inflating a tire, comprising inflating a tire for 20 to 30 seconds.
2. A method of inflating a tire, consisting of inflating a tire for 20 to 30 seconds.

Are these claims different in scope in any way? Given my interpretation of such ranges there is no difference between consisting and comprising in this instance at all.

If the above is true and the inflation time must be between those bounds, then it seems like it would be hard to argue DOE.

Another question is that if I claim 1 or 2 and the prior art states, "We inflated a tire for 2 minutes." I would argue that the art doesn't teach my range. However, if the time range is interpreted as comprising, when you inflate for 2 minutes you had to inflate for 20 to 30 seconds. My belief is that the range is closed and always reflects consisting language in such instances, meaning you can only inflate for 20 to 30 seconds and nothing else.

Hopefully this makes sense. I am trying to figure out the best interpretation for such ranges or find a case where such a construction has been argued.

For claims like pH ranges or amounts in a composition I can completely understand how these claims function since you can end up at pH 9 and never pass through another range depending on how you mix the ingredients.

Given a time range however you absolutely have to pass through the lower range to get to a higher range (i.e. you can't inflate for 2 minutes without inflating for 20 seconds) so the prior art inherently had to have that range occur. If I argue against that interpretation in an office action I end up having to support a logical conclusion that the language is consisting. Would estopple kill DOE if I have to argue this?

[NJ Patent1]

Blaine:  I'm not sure there is an easy answer to your OP re: "is" in connection with ranges.  Construction of the literal scope of the claim is so dependnent on the facts.  "Is" is most likely less limiting that "is between".  But based on ignorance and personal prejudice, I try to avoid it.  The plain meaning of "is 10 to 20" seems clear to me.  Instead, I try something like "[wherein] the reaction is carried out at 100 to 125 degrees".  May / may not make any difference

Concerning "about",  JinIvey points-out the potential 112 para 2 issue.  There is plenty of case law that "about" (and similar terms) are not ipso facto indefinite.  It depends on how much guidance is given in the spec.  However, many of these cases are appeals from D/C decisions involving a presumpively valid claim, the court strains to preserve validity. So if you make it out of the Office with "about 10 - 20" ... But I've been hit with a number of 112 rejections of claims using about in connection with ranges.  Don't know what the estoppel issue arise from amending it out so I don't always use it.   

[ChrisWhewell]

........ the doctrine of equivalents ....... 

know of any recent decisions concerning that doctrine ?  My most-recent recollection is that it was chopped off at the knees.