How is an improper Markush grouping rejection addressed?

An improper Markush grouping rejection can be addressed in several ways:

1. Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
2. Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
3. Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
4. Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.

The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.

To learn more:

• improper Markush grouping
• patent rejection
• claim amendment