What is the legal basis for rejecting claims due to undue multiplicity?
The legal basis for rejecting claims due to undue multiplicity is primarily 35 U.S.C. 112(b) (or pre-AIA 35 U.S.C. 112, second paragraph). As stated in MPEP 2173.05(n): “Undue multiplicity rejections based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be applied judiciously and should be rare.” This rejection is based on…
Read MoreWhat is the legal basis for rejecting omnibus claims?
The legal basis for rejecting omnibus claims is primarily 35 U.S.C. 112(b), which requires patent claims to particularly point out and distinctly claim the subject matter of the invention. According to MPEP 2173.05(r): “This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is indefinite in that…
Read MoreWhat is the legal basis for the requirement of definite claim language in patents?
The legal basis for the requirement of definite claim language in patents is found in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The MPEP states: “35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that a patent application specification shall conclude with one or more claims particularly pointing out and…
Read MoreWhat are the potential issues with using trademarks in patent claims?
Using trademarks or trade names in patent claims can lead to several issues: Indefiniteness: The claim scope becomes uncertain since trademarks identify the source of goods, not the goods themselves. Improper use: Using a trademark to describe a material or product in a claim is considered improper use of the trademark. Potential rejection: Claims with…
Read MoreHow does the USPTO handle indefiniteness rejections for computer-implemented functional claim limitations?
How does the USPTO handle indefiniteness rejections for computer-implemented functional claim limitations? The USPTO has specific guidance for handling indefiniteness rejections related to computer-implemented functional claim limitations. According to MPEP 2173.02: “For a computer-implemented functional claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is…
Read MoreHow can indefiniteness rejections arise from biological deposit issues in patent applications?
Indefiniteness rejections related to biological deposit issues in patent applications can arise under 35 U.S.C. 112(b). According to MPEP 2411.01: “A rejection for indefiniteness, as applied to a deposit issue, requires the examiner to provide reasons why the terms in the claims and/or scope of the invention are unclear because of an incomplete or inaccurate…
Read MoreWhat are the issues with using phrases like “for example,” “such as,” or “or the like” in patent claims?
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. 1. For the phrase “for example,” form paragraph 7.34.08 states: Regarding claim [1], the phrase…
Read MoreWhat makes a claim indefinite under 35 U.S.C. 112(b)?
A claim can be considered indefinite under 35 U.S.C. 112(b) if it creates confusion about when direct infringement occurs. The MPEP 2173.05(p) provides an example from the In re Katz case: “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA…
Read MoreAre functional limitations allowed in patent claims?
Yes, functional limitations are generally allowed in patent claims. The MPEP states, “There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper.” In fact, functional language can be used to limit claims without using the means-plus-function format. However,…
Read MoreWhat are form paragraphs in patent rejections under 35 U.S.C. 112(b)?
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims. According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10,…
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