EP 3 609 955 B1 relates to aliphatic polyamide compositions that provide high dielectric performance and high mechanical performance, as well as to mobile electronic device components incorporating the aliphatic polyamide compositions.
Brief outline of the case
The OD maintained the patent according to a MR2 filed during the OP before the OD.
Both proprietor and opponent appealed.
The proprietor’s appeal was deemed not admissible, as the latter was not adversely affected by the OD’s decision.
Eventually, the board confirmed maintenance according to MR2.
The case is interesting as it deals with the admissibility of the proprietor’s appeal and the opponent’s objection under Art 84 about the conjunction “OR”.
The opponent’s point of view on admissibility of the proprietors appeal
On the basis of the main request, see decision, in particular the cover page, the opponent concluded that the proprietor was not adversely affected by the decision and its appeal was not admissible.
The board’s decision on admissibility
For the board, a party is adversely affected if the decision under appeal does not accede to its MR or to AR preceding the allowed AR.
Whether this is the case has to be assessed by comparing the final requests submitted at the first-instance proceedings with the substance of the decision under appeal.
In the case at hand, the OD decided that the proprietor’s MR1 did not meet the requirements of R 80, admitted the new MR=MR2 and a new AR1 submitted by the proprietor during the OP into the proceedings, and considered that the MR2 fulfilled the requirements of R 80, Art 123(2+3) and Art 84, as well as Art 54, 56 and 83.
According to its reasons, the decision under appeal did not accede to the patent proprietor’s MR1. However, it is clear from the file, in particular from the cover page of the decision, point 9 of section I and section III of the decision and section 6.1 of the minutes of the OP, that the patent has been maintained in amended form based on MR2 and the amended description submitted during the OP. The final MR=MR2 of the patent proprietor was therefore granted.
Hence the patent proprietor was not adversely affected by the decision under appeal, and their appeal is rejected as inadmissible, cf. R 101(1).
The opponent’s objection under Art 84 against claim1 of the MR
The opponent, relying on the definitions provided in excerpts of dictionaries, considered that the formulation of claim 1 implied a mutual exclusion of features A and B from its scope as a result of the use of the word “or” in the claim.
The opponent argued that the formulation of claim 1 as a composition containing mutually exclusive alternatives in the form of feature A or feature B was inconsistent with the disclosure of the patent in suit, in particular its examples.
The board’s decision on Art 84 of claim 1 of the MR
According to the case law of the boards of appeal, however, while both exclusive and inclusive disjunctions can be expressed by the term “or” – also in the sense of “either … or” – that term is to be understood as an exclusive “or” only where the two alternatives are, by their very nature, mutually exclusive, i.e. technically incompatible with each other, see T 1409/16, Reasons 1.3.2 to 1.3.5.
Thus, the default position in the case law is that “or”, even in the expression “either … or”, is inclusive, unless the technical context makes exclusivity unavoidable.
In the present situation, feature A of claim 1 is described in paragraph 8 of the patent in suit and concerns the definition of the structural units present in the aliphatic polyamide of the composition. Feature B concerns the dielectric constant at 1 MHz of the aliphatic polyamide compositions as a whole, containing the aliphatic polyamide and glass fibres, and is described in paragraph 16 of the patent in suit.
There is nothing in these paragraphs nor in the whole of the patent in suit that would indicate that features A and B are mutually exclusive. On the contrary, the exemplified compositions with polyamide 6,10 as defined in paragraph 8 have dielectric constants of less than 4.0, therefore supporting the inclusive form of the wording “or” in claim 1 of the allowable MR. In view of this, the board could not follow the definitions provided in the excepts of dictionaries by the opponent and there is no contradiction between claim 1 of the MR and the examples of the patent in suit.
Comments
On the admissibility of the MR
By calling the second attempt to get the patent maintained a MR, the proprietor has manifestly not realised that it implied the he was not pursuing the initial MR=MR1. If he wanted to appeal the non-admissibility of its initial MR, he should have called MR2 AR1 or at least given an additional identification to what it called MR, e.g. MR1 or MR2.
The actual minutes can be found on page 35 of this document.
As the patent was maintained by the board according to MR2, the outcome was nevertheless positive for the proprietor. It could have been quite different.
“OR” in a claim
The problem is that in everyday language “OR” can be inclusive or exclusive.
The conjunction “OR” in a claim should only be used when it is exclusive, for instance in case of two different alternatives falling under the same concept or when the information linked by the conjunction “OR” represents two mutually exclusive statements.
To avoid any misunderstanding, I would avoid the use of “OR” in a claim when its is inclusive.
Comments
7 replies on “T 0944/24-What does the term MR mean-Clarity of an “OR” conjunction”
You conclude: “I would avoid the use of “OR” in a claim when its is inclusive.”. I fully agree. Anything else is asking for trouble. Especially when “AND/OR” is acceptable drafting. A proliferation of “AND/OR” may be unacceptable, but one “AND/OR” definitely isn’t.
I also regularly see general statements in patents/applications along the lines that, unless explicitly indicated otherwise, OR in this document shall mean an inclusive OR.
If there is such a statement in the application, it is hard to argue against using ‘OR’, especially in the light of G1/24.
@BJ
It might be hard to argue against using ‘OR’ in the light of G1/24, but if an “OR” is meant to be inclusive, then it can only be interpreted as not meaning “OR” but “AND”. Why make life so complicated?
@ Extraneous Attorney
When in a claim one finds AND/OR it is difficult to allege that the OR in inclusive. A proliferation of AND/OR in a claim can indeed lead to a problem of clarity or lack of unity when all features are linked with OR. With AND/OR linking claimed features, it can end up that taking into account a series of AND, the claim can lack of N or IS over the prior art. The same applies when all sentences of the description start with “may”: if everything is optional, nothing is optional, see T 1203/13.
In real life, the context may or may not clarify, same for the description, but a claim should be clear on its own. If OR were clear, lawyers would not bother to insert “but not both” to specifically exclude an inclusive reading, or to insert “or both” to specifically exclude an exclusive reading. To my knowledge, the use of OR in a claim is not allowed in US claim drafting as rendering the scope unclear. After all, they are the ones who invented the claims.
“The conjunction “OR” in a claim should only be used when it is exclusive, for instance in case of two different alternatives falling under the same concept or when the information linked by the conjunction “OR” represents two mutually exclusive statements.”
Apart from for the fact that this decision makes it clear that “or” is interpreted as having an inclusive meaning.
If you want “or” to have an exclusive interpretation, you need to use it in the claim and make it clear from the description that it is exclusive…
If you have a claim using the term comprising, I don’t see the issue in using “or”. I would always draft with “and/or” but if your claims includes at least A or B, it is clear to me that this is inclusive in the absence of any other meaning. Often the specification or dependent claims will make it unambiguously clear what the intended meaning is anyway.
@ D,
In view of the various comments, my conclusion is to avoid to give “OR” an inclusive meaning in patents. Instead of defining “OR” as being inclusive, why not make matters simpler and simply use “AND” in the original disclosure.
When in the description Embodiment B is considered as being an alternative to Embodiment A, you will have difficulties to allege that the use of “OR” in the claim is inclusive. Trying to claim the combination of Embodiment A and Embodiment B will earn you an objection of added matter, unless the combination A “AND” B is directly and unambiguously derivable from the original disclosure.
I can agree that “comprising” is an open statement, but the conclusion that then using “OR” in the claim, “OR” is then inclusive does not follow logically.
A device comprising features ABC or D can as well be interpreted that the device comprises either ABC or ABD, but not necessarily ABCD. Depending on what is in the description, you might earn either an objection of lack of clarity, unity or an objection of added matter. Trying to save claim fees by bringing in a claim a succession of OR can back fire. It is worse if you bring a succession of “AND/OR” in the claim.
As far as succession of “AND/OR” conjunctions in an independent claims, I refer to a previous comment of mine.
In conclusion the use of “OR” in a claim should be reserved to an “Exclusive OR”. If this meaning is not clear from the claim itself, it should be directly or indirectly clarified in the original disclosure. Bringing later a definition of “OR” might face an objection of added matter.
Being an electronic engineer by training, an “OR” gate and an “Exclusive OR” gate have two very distinct functions, which cannot be the same as that of an “AND” gate. This might, for instance, be different for chemists