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I wonder what is the real effect of "a combination there of". If I write "a,b,c" vs "a,b,c, a combination thereof". I understand the logical difference. Is there a precedent in which usage in the phrase was tested by court?

EDIT Based on the answers: Let's take the argument "It's possible that the phrase a, b, [or] c (without "combination") would be interpreted to EXCLUDE the possibility of the combinations". I agree. If my claim exclude combinations and someone uses my patent with "a" and "b". In that case he or she use it with "a" so they infringe my patent. So what do I gain by using "combination there of"? Maybe if the combination of "a" and "b" is new than someone can claim that there is nothing in the prior art to suggest "a" and "b". In that case I can block future usage in "a" and "b" by using "a combination thereof"?

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First, the phrases are incomplete because they're missing the conjunction word "and" or "or". The effect should be a rejection by the Examiner under section 112 for being indefinite. To appreciate the importance of the conjunctions, see Superguide Corp v. DirecTV Enterprises, 358 F.3d 870 (2004).

Regarding the term "combination thereof" itself, it's a very common English term that is not likely to confuse anyone. A court interpreting this term would most likely give it the "plain and ordinary meaning" as is standard in claim interpretation.

The most relevant legal concept is likely "surplusage canon", that there should not be needless terms in a legal document. So if you include "combination thereof", this term needs to have some meaning.

This could cause issues in your application/patent if there are instances of both phrases a, b, [or] c, and a, b, c, [or] a combination thereof. It's possible that the phrase a, b, [or] c (without "combination") would be interpreted to EXCLUDE the possibility of the combinations, because otherwise the term "combination" would be meaningless (against the surplusage canon).

If you google for "surplusage" with "federal circuit", you should find case law applying the principle.

Additional note: Looks like "claim construction surplusage" gives better google results. For one example CAFC decision including application of the surplusage rule, see Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1325 (Fed. Cir. 2001) (rejecting a proposed construction that would render a phrase as “mere surplusage”).

Additional note (to address revised question): Your question appears to ask which situations would claiming the combination itself be useful. The most likely cases should be in chemical/pharmaceutical patents where mixtures of chemicals are important.

Take a look at Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274 (Fed. Cir. 2003) (holding that if a Markush claim recites “a member selected from the group consisting of A, B, and C,” the claim is presumed to permit the member to be one and only one of A, B, or C, and to exclude mixtures or combinations of A, B, and C).

  • Thanks @Chris. I read and googled as you suggested. Please see my edit to the question – nmnir Jun 17 at 9:27
  • Added the Abbott case involving pharmaceuticals and Markush groups. – Chris Jun 17 at 15:43
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    Thank you so much. It summarize a dispute that we had in our firm. – nmnir Jun 17 at 19:03
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The statutory patent language has been construed as mandating satisfaction of three separate and independent requirements referred to as the written description requirement, the enablement requirement, and the "best mode requirement. An inventor, therefore, must both describe the claimed invention adequately and enable its reproduction and use,as well as set forth the best mode of carrying it out.

what is the real effect of "a combination there of". If I write "a,b,c" vs "a,b,c, a combination thereof

As described above to satisfy the statutory requirement, the use of term combination thereof protects all the permutations and combinations possible and equivalents that are not disclosed by the inventor and would protect from invalidation due to failure to disclose.

Is there a precedent in which usage in the phrase was tested by court?

I am not aware of any specific case, but i would try to explain you with the following example.

Eg: case 1: You describe your invention as composition a,b,c, a combination thereof and the patent claim granted was a composition comprising a,b,c if a person tries to practice your invention with addition of a new element d he is considered as infringing your invention, Though the component d is not disclosed in the patent as you have described as combinations thereof your patent is still valid on his invention.

case 2: You describe your invention as composition a,b,c and the patent claim granted was a composition comprising a,b,c if a person tries to practice your invention with addition of a new element d he is considered as infringing your invention,the component d is not disclosed in the patent your patent may be valid but the alleged infringer has a ground under written description requirement for invalidating your patent.

The above example is based on assumption, in actual scenario there are many other factors come in to role during litigation.

  • Thanks. Hod does adding d infringing my patent? I claimed only a,b,c, ac, bc, ac,abc – nmnir Jan 17 at 10:34
  • @nmnir that's based on the claim term "Comprising" as it allows to protect unclaimed alternates. Please be noted this a broad scenario that i had explained and actual differs by Case by case. please refer an old answer patents.stackexchange.com/questions/20127/… – RishiM Jan 17 at 10:47

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