Decided March 10, 2009
(Appeal 2007-3617, Appl. No. 09/941,329, Tech. Center 2100)
I blogged about Ex Parte Buckley earlier (here), discussing a §112 rejection that really turned out to be a claim construction issue: whether “additional” modified one noun phrase, or two. It turns out there was another claim construction issue lurking in this case, one which didn’t get much discussion: when the claim recites “A or B,” is B optional?
The simplistic answer is “The claim uses the alternative so B is optional." But does the word “or” always mean in the alternative? I say No, not always — as usual, it depends on *exactly* what the claim says.
Here's claim limitation at issue: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle or a signal device transmitter.”
The Board agreed with the Examiner that “under the broadest reasonable interpretation of the claim the ‘hardware dongle’ may be read as optional.” (Decision, p. 9.) The Examiner laid out his argument in the Answer:
Additionally, as an alternate argument, Applicant's entire argument is moot in view of the fact that that the limitation requiring access without "an additional hardware dongle" is not even required by the claim when the alternative OR limitation requiring access without an additional signal device transmitter is utilized. Examiner again notes that evaluating this claim in view of the OR conjunction for the purposes of determining patentability requires the claim to be interpreted two ways, 1) wherein both the hardware and software layer can be accessed without the requirement for an additional hardware dongle OR 2) wherein both the hardware and software layer can be accessed without the requirement for an additional signal device transmitter.Note the Examiner’s conclusion that the use of “or” signals an alternative. In this case, I say the Examiner is wrong: the negative phrase “without” effectively changes the alternative to a combination. I think the correct claim construction is “both the hardware and software layer can be accessed without the requirement for an additional hardware dongle AND without the requirement for a signal device transmitter.”
(Examiner’s Answer, p. 38, emphasis in original.)
To make this point clearer, consider this simpler example: “turning the vehicle without stopping or slowing.” Okay, my example limitation used the word “or” — but surely no one would say that stopping and slowing are alternatives? I think it’s clear that the claim actually requires two things: turning without stopping; and turning without slowing.
I was disappointed to see that the Board agreed with the Examiner on this, though it would have helped if the Applicant filed a Reply Brief to address the point. As a practical matter, it’s probably wiser to amend during prosecution rather than trying to convince the Examiner that “or” doesn’t always mean “in the alternative.” In this case, I would amend to: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle and without the requirement for a signal device transmitter.” Or maybe “wherein each of the hardware and the software layer” — because someone might interpret "both" as requiring simultaneous access?
The actual claim at issue you are wrong about. Your car example is a toss up though you're probably wrong about it too. The issue in the car example is that stopping necessarily requires slowing, thus there is overlap. There is no overlap in the claims at issue in your case that went to the board. Your "or" issue may sometimes play out how you want it to, but that case certainly wasn't one of them.
ReplyDeleteThere is a trap that many patent drafters still fall into.
ReplyDeleteIn SUPERGUIDE CORPORATION,v.DIRECTV ENTERPRISES, INC., the CAFC said that "at least one of A and B" meant, essentially, "at least one of each of A and B." To point out the correct way to express alternatives, in footnote 10, the CAFC cites Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (interpreting the phrase “at least one of two-digit, three-digit, or four-digit year-date representations” as “only two-digit, only three-digit, only four-digit, or any combination of two-, three-, and four-digit date-data”).
Thus, you should say "at least one of A or B" if you don't mean "both A and B."
broje TINLA IANYL
>Your "or" issue may sometimes play out how you
ReplyDelete>want it to, but [Ex parte Buckley] certainly
>wasn't one of them.
Perhaps my logical approach [NOT(a OR b) = NOT A and NOT b] was too simplistic. Even so, as a matter of plain English interpretation, I still think "without A or B" means "without A and without B".
You're saying that in the world of claim drafting, whether or not "without A or B" means "without A and without B" depends on whether A overlaps with B? And the two are not the same if there is overlap?
Anonymous said...
ReplyDelete>There is a trap that many patent drafters
>still fall into.
>Thus, you should say "at least one of A or B"
>if you don't mean "both A and B."
So the trap is assuming that "A or B", as used in a claim, means one of them is optional?
And Superguide is relevant not to the use of "or" (not at issue there), but to the correct way to express an alternative [without using OR]?
*****So the trap is assuming that "A or B", as used in a claim, means one of them is optional? *****
ReplyDeleteNo. The trap is trying to use "at least one of A and B" to mean "A or B." "A or B" used to draw a 112 pretty much automatically, and the MPEP used to cite case law instructing Exmainers to reject it unless the two alternatives clearly could not be used together. So it became a convention for practitioners tho say "at least one of A and B," and I keep running into people who still use it.
The 112 issue with alternatives runs to whether the "or" is an "exclusive or" or an "inclusive or," and the case law basically said it was OK to use "A or B" if the alternatives could not be used together. In other words, "A or B," under that case law, meant an exclusive or. Superguide established that the way to express an inclusive or is to say "at least one of A or B," and not to say "at least one of A and B."
These days, the MPEP seems to have no problem with using "or," but you can see in Buckley a result where the meaning is ambiguous. The claim certainly could have been amended to be more clear. Anyway, my comment was not really about Buckley. Just an aside.
broje TINLA IAMYL