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montysimmons
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 315
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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In a US patent claim “at least one of a,, c or d”. What if

Customer Question

In a US patent claim “at least one of a, b, c or d”. What if one combination (e.g. bc) won't work?
E.g.,”… wherin the image displayed is modified by at least one of: 1) brightened by increasing the voltage, 2) brightened by switching to the second polarization, 3) darkened by reducing the voltage or 4) darkened by switching to the first polarization.”
This "at least one of a,b,c or d" structure means it could be any combination of a, b and c.
It’s logical to do any combination of 1 and 2 or any combination of 3 and 4 (choosing to do 1, 2 or 1 and 2 at the same time to brighten image and 3, 4, or 3&4 at the same time to darken).
At different times you want to do different things (e.g., brighten in day and probably darken at night). So the clause is intended to list the combination of ways we might brighten or darken.
QUESTION: Could examiner or infringer claim that since one of the combinations wouldn’t be done AT THE SAME TIME, like 1 and 3, that the claim was invalid because one of the combinations “wouldn't work”?
IF "yes", what's a better approach? Please quote MPEP ref in answer.
Submitted: 5 months ago.
Category: Intellectual Property Law
Expert:  Attorney2 replied 5 months ago.

Welcome to JA and thank you for your question. I apologize I am not sure what you are asking. Would you be kind enough to re-phrase the question?

This is a link for the laws http://www.uspto.gov/patents-getting-started/general-information-concerning-patents

http://patentlyo.com/patent/2014/06/reasonable-certainty-regarding.html

Expert:  montysimmons replied 5 months ago.

I can help you with such question.

I understand your question: some of the combinations are not possible together.

Note that "at least one of a,b, c or d" does not require any combination - just one of the options listed.

Your question is . . . if one of the possible combinations (such as b and c for example) is not possible, (and thus not enabled by the specification), is the claim valid?

The answer is YES the claim is still valid. The claim only requires "at least one of" the possible items/modes/"things". The claims do not require a combination. IF the claims required a combination that was "not possible" then such claim would not be enabled and would be invalid.

Also, if we are talking about an issued patent, the patent is presumed valid. Such patents will be difficult to invalidate for such an issue in any event.

Please note there will be no MPEP reference (that I know of) supporting my answer. In fact, the phrase "at least one of" is not in the MPEP. My answer is simply based on my 16 years experience in the field. Now MPEP chapter 2100 will give you some general information on claiming issues but nothing specific regarding your example.

Please keep asking questions until you are satisfied with my answers.

Best Regards,

Customer: replied 5 months ago.
Hi Monty,
Wonder if we’re related somewhere between here and Adam? I do have this and another patent that I could use help on and thank you for that response on this one.(The example we’ve been using: "...the controller switches at least one of 1) the light on, 2) the light's color to red, 3) the brightness level to 200 OR 4) the light off".)Questions coming from that response:
1. So this does restrict anyone from using the combinations 1, 2, 3, 4, 1&2, 1&3, 1&2&3, 2&3, 3&4, 2&3&4 and 2&4
even though the combinations 1&4, 1&2&4, 1&2&3&4 and 1&3&4 will never happen? I think your answer is Yes.
Y/N ___?2. Your comments confirm that even if NONE of the combinations work together the claim is still valid.
However: what if one of the uncombined elements in the list (e.g., 2) is bad science (it won’t work)?
Let’s say, it’s not even possible to turn that kind of light red as option 2 lists, does that invalidate the claim just because one of them in the list wasn’t reduced to practice enough to show us that it doesn’t even work? Y/N ___?
(Does the MPEP speak to that?)3. Reading some of the patent claim case articles, I’ve gotten mixed signals on using “OR” as opposed to “and” in these “at least one of” lists. My understanding is that if you want this to mean “any combination of 1-4” (WITHOUT requiring that any or all combinations necessarily even work together as you said), the syntax “at least one of 1) a, 2) b OR 3) c” is the safest language. Y/N ___ ?By the way, I tried to find you on LinkedIn but couldn’t. Are you listed there? What country are you in?
Looking forward to talking more,
John
Expert:  montysimmons replied 5 months ago.

Sorry for the slow response. I have not been logging on every day of late . . . very busy.

YOU ASK

Questions coming from that response:
1. So this does restrict anyone from using the combinations 1, 2, 3, 4, 1&2, 1&3, 1&2&3, 2&3, 3&4, 2&3&4 and 2&4
even though the combinations 1&4, 1&2&4, 1&2&3&4 and 1&3&4 will never happen? I think your answer is Yes.
Y/N ___?

ANSWER
YES, all combinations where "at least one" combination-member is enabled by the specification are covered by the claim . . . . not because of the combination but because "at least one of" 1, 2, 3, and 4 are being used by the combination.

YOU ASK

2. Your comments confirm that even if NONE of the combinations work together the claim is still valid.

However: what if one of the uncombined elements in the list (e.g., 2) is bad science (it won’t work)?
Let’s say, it’s not even possible to turn that kind of light red as option 2 lists, does that invalidate the claim just because one of them in the list wasn’t reduced to practice enough to show us that it doesn’t even work? Y/N ___?
(Does the MPEP speak to that?)

ANSWER

My answer would be YES, the claim is still valid . . . but you are getting closer to an invalid claim. It is my position that as long as one of the listed possibilities is enabled by the teachings in the specifications the claim is still valid for that one possibility.

Suppose the claim limitation is "at least one of a, b, c and d" and a, b, c and d are all possible but "b" but not enabled by the specification. Then the claim is valid for a, c, and d but not "b". The Key is to trigger off the "at least one of" language and the specification teachings. IF at least one option in a list of options is enabled by the specification the claim is valid (for the "at least one" language). That is my position.

The MPEP will not address such issue directly.

YOU ASK

3. Reading some of the patent claim case articles, I’ve gotten mixed signals on using “OR” as opposed to “and” in these “at least one of” lists. My understanding is that if you want this to mean “any combination of 1-4” (WITHOUT requiring that any or all combinations necessarily even work together as you said), the syntax “at least one of 1) a, 2) b OR 3) c” is the safest language. Y/N ___ ?

ANSWER

I have seen many people use the word "OR" in claims and it gets allowed in an issued patent. I personally do not use "OR" in any of my claims. I always find a way to use "AND". Instead of "A OR B" I use . . . . "one of A and B". Such has always worked for me and I just like to stick with what I know works as of the day of drafting the claim.

To answer your question "at least one of a, b, c, and d" covers all individual options and all combinations (because of the "at least one" qualifier). I do not like "at least one of a, b, c, OR d". I cannot say such is not valid but I do not like it as I know "and" works.

YOU ASK

By the way, I tried to find you on LinkedIn but couldn’t. Are you listed there? What country are you in?
Looking forward to talking more,
John

ANSWER

Yes, I have a LinkedIn profile but I do not long on very much. Do not use any type of social media much at all. My website is simmonspatents.com.

Customer: replied 5 months ago.
Hi Marty,
Thanks for those responses. I have other questions and another patent to work on but I need to be sure we are set up right for your payment, etc. Where are we on that?Also, does that list logic work backwards too? (i.e. in a “at least one” list like that, what happens if they’re all true but somebody else already did one of them (like in Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001):Claim 16 of US Patent No. 5,852,824 where the guy with the patent lost because somebody had already done one of the things in his “at least one” list --example below).Question 1: I have a claim that looks like this:
2. The device of claim 1, wherein
said image is visible in 3-D due at least in part to at least one of
1) said display directs different images to different eyes supporting stereopsis,
2) video voodoo1 or
3) video voodoo2.Everybody and his inbred cousin does “1)” since that’s how all 3-D has worked up till now. Does including one element in my list that’s old art destroy the claim like it appears to have done to Mr. Brown? Yes/No ___.
Yet, in leaving out the old (and still needed) “1)” someone else might beat my claim by doing all 3. I could turn the claim into 3 claims but there must be a better (and cheaper) way!Question 2: It’s good to know that one element in an “at least one of…” list within a claim can be bogus without destroying the applicability of the list!
Similarly, if one PARAGRAPH in the claim below isn’t true (guess which one) can the claim still be valid?
2. The device of claim 1, wherein
the number of ball bearings is doubled to reduce the load on each individual ball bearing; and
the world is saved by the superior plastic ball bearings.If, in fact, the last line is bad science and won’t happen (not sure if the world can be saved by ball bearings), is the true part of claim 2 still a valid claim (and the dependent claims dependent on claim 2 are good too) as long as one of the multiple claim lines is good? (Is there an MPEP reference on this?)Thank you,
John
Customer: replied 5 months ago.
Oops...menat to say "Hi Monty".
Mia culpa!
John
Customer: replied 5 months ago.
Did you see my last question? (I know everybody is getting ready for a long weekend and it may have been buried in the shuffle).
If you don't have time to respond today have a great Independence Day! (but if you can possibly respond today.....)
Thanks,
John
Expert:  montysimmons replied 5 months ago.

I just got logged back on JA. Been very busy and still very busy.

Yes, the logic does work "backward" if prior art has "at least one of" in a list of items then the limitation has been done before in the prior art.

YOU ASK

Question 1: I have a claim that looks like this:
2. The device of claim 1, wherein said image is visible in 3-D due at least in part to at least one of
1) said display directs different images to different eyes supporting stereopsis,
2) video voodoo1 or
3) video voodoo2.

Everybody and his inbred cousin does “1)” since that’s how all 3-D has worked up till now. Does including one element in my list that’s old art destroy the claim like it appears to have done to Mr. Brown? Yes/No ___.

ANSWER

YES - for such limitation. For validity purposes regarding what has been done in the prior art, adding one old "technology" in a list of new technology (using "at least one of") "zaps" that limitation. The claim may still be valid but such will depend on whether or not there are other limitations that are novel and thereby "save" the claim.

YOU ASK

Question 2: It’s good to know that one element in an “at least one of…” list within a claim can be bogus without destroying the applicability of the list!
Similarly, if one PARAGRAPH in the claim below isn’t true (guess which one) can the claim still be valid?

2. The device of claim 1, wherein the number of ball bearings is doubled to reduce the load on each individual ball bearing; and the world is saved by the superior plastic ball bearings.

ANSWER

You ask about "the claim" and I will assume such refers to "Claim 1".

As to Claim 1, claim 2 is a "dependent claim" as it depends from claim 1. A dependent claim cannot typically affect the validity of the claim from which it depends.

If Claim 1 was valid before claim 2 the claim 1 is likely still valid. I can think of one very limited and unlikely exception but otherwise claim 1 is still valid.

IF you are referring to Claim 2, the limitation "the world is saved by the superior plastic ball bearings." would not make it past the Examiner. If it did, is the claim valid?

ANSWER
The answer depends on what type of problem the bad clause embodies. If the bad clause is clearly not enabled by the specification then Claim 2, and all claims that depend from claim 2 are not enabled, and thus, invalid.

If claim 2 has a simple scrivener's type error the courts will likely overlook such error.

IF claim 2 contains the type of error that (after reading the specification or in light of the specification) the meaning of the claim can be determined in a way to save validity, then the courts will often uphold the validity of the claim.

Claim construction and validity are very fact specific questions and one answer rarely fits all questions.

YOU ASK

If, in fact, the last line is bad science and won’t happen (not sure if the world can be saved by ball bearings), is the true part of claim 2 still a valid claim (and the dependent claims dependent on claim 2 are good too) as long as one of the multiple claim lines is good? (Is there an MPEP reference on this?)

ANSWER

NO. Think enablement. The specification (written description, drawings, etc.) must teach and enable every REQUIRED limitation of a claim (must teach one of ordinary skill in the art to make and use the invention). IF a REQUIRED claim limitation is impossible (like time travel - as far as we know) then the claim cannot be enabled by the specification and is invalid.

Example: suppose m, n possible, o is not possible.

X as in claim 1, wherein B is at least one of m, n, and o.

IF m and n are enabled by the specification but not o, claim is still valid.

X as in claim 1, wherein B comprises m, n, and o.

IF m and n are enabled by the specification but not o, claim is invalid and all claims that depend from claim 1 is invalid.

Please keep asking questions until you are satisfied.

Customer: replied 5 months ago.
Hi Monty,
I’m only confused by one thing in your answer. Please forgive ALL CAPS to identify my quick question way below (I don’t know how to add color or font attributes in JA).Question 1: I have a claim that looks like this:
2. The device of claim 1, wherein said image is visible in 3-D due at least in part to at least one of
1) said display directs different images to different eyes supporting stereopsis,
2) video voodoo1 or
3) video voodoo2.Everybody and his inbred cousin does “1)” since that’s how all 3-D has worked up till now. Does including one element in my list that’s old art destroy the claim like it appears to have done to Mr. Brown? Yes/No ___.
ANSWER
YES - for such limitation. <---
For validity purposes regarding what has been done in the prior art, adding one old "technology" in a list of new technology (using "at least one of") "zaps" that limitation. The claim may still be valid but such will depend on whether or not there are other limitations that are novel and thereby "save" the claim.DOES “YES - for such limitation” MEAN THAT THE ONLY PART OF THE CLAIM “DESTROYED” IS LINE “1)”?
I.E. THAT ONLY LINE “1)” (STEREOPSIS) IS INVALIDATED AND “2)” AND “3)” ARE STILL PART OF A GOOD CLAIM (PRESUMING THE “other limitations” “2)” AND “3)” ARE NOVEL)?NO MORE ALL CAPS! My reason for asking (since I probably misunderstood “for such limitation” and “such will depend on whether or not there are other limitations that are novel” above) is that Mr. Brown’s “2)” and “3)” (his “three-digit, or four-digit year-date representations”) though novel didn’t "save the claim" for him (in that case Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001):Claim 16 of US Patent No. 5,852,824).Sorry I didn’t understand that one point.
Thanks and happy independence holiday!
John
Expert:  montysimmons replied 5 months ago.

I understand your confusion - that reply is a bit vague.

YOU ASK

DOES “YES - for such limitation” MEAN THAT THE ONLY PART OF THE CLAIM “DESTROYED” IS LINE “1)”?
I.E. THAT ONLY LINE “1)” (STEREOPSIS) IS INVALIDATED AND “2)” AND “3)” ARE STILL PART OF A GOOD CLAIM (PRESUMING THE “other limitations” “2)” AND “3)” ARE NOVEL)?

ANSWER

Remember, we are talking about validity here, not infringement.

2. The device of claim 1, wherein said image is visible in 3-D due at least in part to at least one of
a) said display directs different images to different eyes supporting stereopsis,
b) video voodoo1 or
c) video voodoo2.

Suppose the claim has lots of limitations . . . IF one is depending on the limitation above to maintain validity (all the other limitations are in the prior art as well), and "a" is in the prior art, then YES, the entire claim would be invalid.

(now if you remove "a" and "b" and "c" are novel the claim would be valid).

But if the claim has several novel limitations, "a" has little/no effect on validity. All "a" does is basically take the limitation comprising "a" off the table, so to speak. And worse, "a" could be used to avoid infringement if used/done correctly.

I hope that is a little more clear.

Customer: replied 5 months ago.
Hi Monty,
Hope this finds you well. I reread your response several times and still need to confirm what it meant. BTW, I didn’t mean to confuse the issue by describing this as being claim 2 dependent on claim 1. I’m just concerned with claim 2’s validity within itself (the validity of claim 2 is all I’m talking about). I modified the examples below to avoid all that confusion.Example CLAIM A:
A display device wherein the image is visible in 3-D due to AT LEAST ONE OF
1) said display directs different images to different eyes supporting stereopsis,
2) video voodoo1 or
3) video voodoo2; and
other 100% valid stuff in this claim.Example CLAIM B:
A display device comprising an LCD screen wherein
said display directs different images to different eyes supporting stereopsis;
said display effects video voodoo1;
said display effects video voodoo2; andQ U E S T I O N : Does this chart below summarize correctly what you were saying? (If not, please correct the chart).
EX. CLAIM A: When one numbered LINE IN AN “AT LEAST ONE OF” LIST (Ex. CLAIM A shown above) is:
1. bad art or not supported in spec: Then the other elements in the list can still be used as good limitations
..all we lost was the bad item in the list. CLAIM A stands (although missing the bad art line)2. prior art: Then the entire “at least one of” claim list portion of CLAIM A is invalid
(since one of the list was prior art).AND, even if the remaining part of CLAIM A (shown as “other 100% valid stuff in this
claim”) is not prior art and is well supported in the spec, ALL OF CLAIM A IS INVALID.EX. CLAIM B: When one LINE IN A CLAIM (EXAMPLE CLAIM B shown above) is:
1. bad art or not supported in spec: Then all of Claim B is invalid (e.g., if voodoo2 is not supported in spec or reality)2. prior art: Then all of CLAIM B is invalid even if other parts of it (e.g., voodoo1 and voodoo2)
are new to the universe.IF all of that chart is correct, I understand your responses and can move forward now! Just let me know.
Thanks!
John
Customer: replied 4 months ago.
Hi Monty,
If that chart is right then I understand your responses. Is that what you were saying?
Thank you!
John
Customer: replied 4 months ago.
Hi Monty,
I've been over and over your response and think I understand what you were saying. It's summarized very briefly on the new chart (attached) showing the one thing that still seems to be not clear.
Would you be so kind as to look at it and say yes or no or which?
Thanks!
John

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