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The Examiner has objected to three of the claims in a patent application I have filed, due to the presence of the phrase "none or more" and requires it to be corrected to "one or more".

The claim is of the form "The method of claim 1, wherein A comprises B and none or more of: C, D, E, and/or F."

This seems fine to me. Am I wrong here?

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    It is the very first time I see such phrase in a claim. In my opinion that phrase is problematic because the range is from 0 to infinity so to speak. Infinity is not a problem, but 0 is because you are not limiting the scope of the claim. Note that you have stated "none or more", so C, D, E, F have no relevance in the claim, rendering it confusing. If you want to limit the scope, the phrase should be "one or more". Perhaps somebody with more experience in US applications will have a different view on this. – the Europeist Nov 10 '19 at 13:34
  • wherein A comprises at least one of B, C, D, E, and F may solve your riddle. – AD Adhikary Nov 10 '19 at 15:05
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    @ADAdhikary i I do not see how that has equivalent scope to the OP's desire. – George White Nov 10 '19 at 23:54
  • @GeorgeWhite. To my understanding, OP's desires to have B included in A and C,D,E or F may or may not be included in A. On the other hand, examiner wishes that OP should be specific about inclusions and non-inclusions. By amending claim as suggested by me, OP's desire as well as examiner's wish get fulfilled. As per OP's desire, B is included and examiner's suggestion also gets honored. By stating, 'at least one of B, C,D, E and/or F'; OP is not specific about 'one' yet gets B included and rest are relevantly irrelevant. – AD Adhikary Nov 11 '19 at 14:12
  • @ADAdhikary I share George White's view, your proposal does not claim A plus B plus maybe something else. When you state "at least one of...", then it can be either combination of the listed elements, so it may be A plus B, but it may also be A plus C, A plus D, A plus C plus D, A plus B plus F, etc. The answer by Eric Shain is the best approach in my opinion. – the Europeist Nov 12 '19 at 7:52
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I hesitate to answer since I'm not a lawyer, but why don't you just have two dependent claims? Something like:

Claim 2: The method of claim 1, wherein A comprises B.

Claim 3: The method of claim 2 further comprising one or more of: C, D, E, and F.

That said, I did a search on Google Patents for issued US patents with "none or more than" and found over 5000 hits. US8108617B2, for instance, has the phrase in several of its claims. If you really want to use that phrase, there seems to be precedent.

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  • At least in 8108617 the phrase is used in the definition of an action not a list of elements. – George White Nov 10 '19 at 17:50
  • I recommend the suggestion in this answer to use a dependent claim rather than to argue with the examiner over this. It cleanly expresses what you want to claim. As a pro se applicant you already have an uphill battle on the formalities of claim wording. etc. – George White Nov 10 '19 at 18:50
  • @GeorgeWhite It was the first patent I checked. There are lots more so there might be another example either a list of elements. In any case using a dependent claim seems clearer. I’m very nervous answering on questions about claim language as I really think that should be the domain of patent attorneys and agents. Feel free to edit my answer if it can be made more correct. – Eric S Nov 10 '19 at 20:44
  • Using the USPTO full text patent earch and restricting to claims I see only 92 hits. One is a very recent reissue RE47,400 "allowing mutual discovery of the device, none or more complementary devices, and none or more complimentary multimedia systems" so my previous comment seems unhelpful. "zero or more" gets 2735 hits in claims (since 1976). I recommend the OP stick to your first suggestion. – George White Nov 10 '19 at 23:23
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I would avoid, as it implies the feature is not included. You will likely have the examiner questioning the validity of the claim before he/she finishes reading the rest of it.

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  • I think there is likely good advice in this answer. If you could flesh it out a bit and add some supporting detail it could easily merit an upvote. – Eric S Nov 13 '19 at 23:18
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My concern would be that a court would find there is no patentable weight to "none or more". If you have a group of options (i.e. "the system of claim 1, wherein one or more of A, B, C or D is present"), it is easier to infringe (since you have four options), but it is also much easier to invalidate (because if there is prior art for A, B, C OR D, you have an invalid claim). By adding "none", even if A, B, C and D are all novel and not obvious, your claim doesn't require any of them, so if the independent claim is invalid, the dependent claim has no patentable weight that would provide a basis for validity. Basically, your dependent claim with "none" as an option can be interpreted as "you can do exactly what claim 1 says, or you can add A, B, C or D". Of course, your dependent claim is slightly different because it requires a new element (B), but everything after that doesn't help you as much as it should. The suggestion of breaking it out into two dependent claims was a good one.

  1. A method for doing A.
  2. The method of claim 1, wherein A comprises B.
  3. The method of claim 3, wherein A further comprises one or more of: C, D, E, and/or F

To see why the "none" option doesn't help, here is what that would look like if you wrote it as its own independent claim:

  1. The method of claim 2, wherein nothing further is added.

There is literally no patentable weight to claim 4. It rises and falls with claim 2.

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