How can an applicant overcome a rejection based on an improper Markush grouping?

How can an applicant overcome a rejection based on an improper Markush grouping?

An applicant can overcome a rejection based on an improper Markush grouping in several ways, as outlined in MPEP 2117:

1. Demonstrate a single structural similarity: Show that all members of the Markush group share a common structure or feature that is essential to the common use of the group.
2. Prove a common use: Provide evidence that all members of the group share a common use or function, even if they don’t share an obvious structural similarity.
3. Amend the claim: Modify the claim to remove alternatives that don’t share the common structure or use with the other members.
4. Present arguments: Explain why the grouping is proper based on the specific nature of the invention and the state of the art.

The MPEP states:

“If a claim is rejected as containing an improper Markush grouping, the applicant may present arguments and/or amendments to demonstrate that the species of the Markush group share a single structural similarity and a common use.”

It’s important for applicants to provide clear and convincing evidence or arguments to support their position. If successful, the rejection may be withdrawn. If not, the applicant may need to consider further amendments or file a continuation application with a modified claim scope.

To learn more:

• Markush claims
• improper Markush grouping
• patent rejection
• overcoming rejection