Anticipate This!™ | Patent and Trademark Law Blog

Proposed Rules Regarding Claims Containing Alternative Language.

Posted in Practice Commentary by Jake Ward on August 10, 2007

In today’s patent news, the USPTO is proposing new rules to “improve an examiner’s ability to focus the examination process for claims that contain more than one independent and distinct invention.”

Specifically, the proposed rules would limit “the practice of listing multiple inventions in the alternative in a single claim.”  These “multi-invention alternative” claims are know as Markush claims in the patent practice.  A Markush claim recites alternatives in a format such as “selected from the group consisting of A, B and C,” and is currently an acceptable form of alternative expression at the Patent Office.  See also the previous AT! post, titled Alternative Expressions in Claims.

In general, the proposed rules would limit each claim to a single invention and define” acceptable” formats for claims that set forth alternatives. 

The proposal of limiting each claim to a single invention includes the following language: 

[W]hen subject matter that reads on multiple species is defined in a single claim using alternative language, the claim is limited to a single invention when at least one of the following two conditions is met: (1) All of the species encompassed by the claim share a substantial feature essential for a common utility, or (2) all of the species are prima facie obvious over each other.

Among the proposed acceptable formats are the following:

1)  The number and presentation of alternatives in the claim should not make the claim difficult to construe;
2)  Each alternative within a list of alternatives must be substitutable one for another;
3)  No alternative may itself be defined as a set of further alternatives; and
4)  No alternative may be encompassed by any other alternative within a list of alternatives, unless there is no other practical way to define the invention.

These proposed rules appear to be designed to both facilitate examination AND shut down a potential loophole in the proposed rules that would restrict initial examination to a limited number of claims.  As the proposal states:

The search and examination of such claims often consume a disproportionate amount of Office resources as compared to other types of claims, because determining the patentability of these claims often requires a separate examination of each of the alternatives within the claims. . . .  Applicants should [also] not be permitted to circumvent the proposed claims rules by presenting a single claim that sets forth multiple independent and distinct inventions in the alternative.

The proposed rules are published in the Federal Register, found here.  Written comments and suggestions must be received on or before October 9, 2007, and may be sent to markush.comments@uspto.gov.  No public hearing will be held.    

2 Responses

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  1. Mark Ferran said, on February 19, 2008 at 4:16 pm

    Dear Mr. Jake Ward.

    I read with interest your January 30th 2007 commentary on Alternative Expressions in Claims.

    In recent years, I have encountered two “objections” by Examiners to the alternative claim language which I employed, which is the same as or similar to language used by yourself, specifically: ”wherein R is one of A, 8, and a combination thereof.” In one articulate Objection, the Examiner stated in substance, as follows [redacted]:

    “Claims [2, 3,and 4] are objected to because of the following informalities: each of the above listed claims use the phrase “the [X] is one of a [A] and an [B]”. It is unclear to the Examiner exactly what this claim language encompasses. The Examiner may interpret the word “and” to mean both [A] and [B] are what makes up the [X], or the Examiner may interpret the words “one of to mean [A] or [B] is what makes up the [X]. The Examiner recommends replacing the word “and” in each of the listed claims with the word “or” in order to clear up the confusion. Appropriate correction is required.”

    My client in the above case (a patent attorney) instructed me to comply with the Examiner’s recommendation to substitute “or” in place of the “and”, which of course I performed. However, for the sake of initiating further dialogue with you on this interesting topic, I will show you the precedent patents I would have cited to defend the objected-to language:

    [Ironically, it used to be illegal/forbidden to use the word “OR” within a patent claim]
    The objected-to claim language (” is one of a and a “) is sort of a
    simplified Markush-type claim, or is simply a different form of “alternative” claiming. This claim form has been used (without objection) in numerous issued patents, and currently pending applications, but it is not exactly a “Markush-type claim”.

    It is not necessarily confusing to use “and” instead of “or”, and in fact, using the word “or” in the phrase creates slight ambiguity where there are three or more elements recited in the alternative.

    Exemplars of Patents using the simpler “and” alternative form include:

    In a famed Patent/Application assigned to Apple Computer, at least one of the claims uses the objected-to alternative “and” format:
    “20. …wherein the document page is one of a map, a newspaper, and a video game scene.”
    “61. …wherein the portable device is one of a laptop computer, a tablet PC, a PDA (personal digital assistant), a cellular phone, a personal communicator, and a multimedia player.”
    And,
    Method for injection blow molding an automotive component

    US Patent 6555039
    “4. The method of claim 3 wherein the component is one of: a body panel and a bumper beam.”
    “2. The method of claim 1 wherein the gas is one of; air and nitrogen.” wherein the component is one of: a body panel and a bumper beam….

    US Patent 7104452
    http://www.patentstorm. us/patents/7104452-clai ms.htm I
    “3. The method of claim 2, wherein the bar code scanner is one of a CCD bar code scanner and a sequential bar code scanner.”
    “5. The earplug of claim 4, wherein the printing device is one of a PAD printing device and a heat transfer printing device.” European Patent EP1212023
    “2. The method of claim 1, wherein a media presentation is one of: a video presentation, an audio presentation and a text-based presentation.” US App. 20070050406

    US Application 20050233914
    3. The cleansing formulation according to claim 1 wherein said at least one of a methylester of a saturated or unsaturated fatty acid is selected from the group consisting of sunflower seed oil, soybean oil, rape seed oil and coconut oil.
    4. The cleansing formulation according to claim 1 wherein said surfactant includes at least one ethoxylated fatty alcohol, one alkyl polyoxyethylene glycol, one alkanolamide, and one polymeric quaternary ammonium salt.
    5. The cleansing formulation according to claim 2 wherein said scrubbing agent is one of a vegetable, OR mineral OR plastic origins.

  2. Jake Ward said, on February 19, 2008 at 4:19 pm

    Mr. Ferran,

    Thank you for reading Anticipate This! (AT!), and for your insightful comments to our post: https://anticipatethis.wordpress.com/2007/01/30/alternative-expressions-in-claims/.

    It indeed seems odd that an Examiner would recommend using the term “or” over the phrase “one of . . . and”. In particular, the rationale articulated by the Examiner in the matter you described is clearly incorrect.

    A claim is to be interpreted as broadly as the claim terms reasonably allow. MPEP 2111. However, the claim as a whole must still be considered by the Examiner, i.e. every limitation in the claim must be considered and the Examiner may not dissect the claim into discrete elements for purpose of evaluating the elements in isolation. MPEP 2106. Dissection of a claim and ignoring limiting terms is clearly inappropriate. Under these tenets of examination procedure, a claim reciting “the X is one of A and B” cannot reasonably be construed to mean “the X is A and B”. Such a construction could only arise if the Examiner inappropriately ignores the phrase “one of” in interpreting the claim.

    Although we have employed “one of . . . and” language in a multitude of applications, we have not yet had to respond to such an objection. If the Examiner’s would indicate a preference of the term “or” over the phrase “one of . . . and”, however, we also would likely amend as indicated since the form is no longer considered improper.

    FYI. You may appreciate another of our posts relating to the proposed USPTO rules affecting alternative language in claims: https://anticipatethis.wordpress.com/2007/08/10/proposed-rules-regarding-claims-containing-alternative-language/.

    We hope you continue to enjoy our content at AT!.


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