How can limitations from the specification be properly incorporated into the claims?
Incorporating limitations from the specification into the claims should be done carefully to avoid indefiniteness issues. The MPEP 2173.03 provides guidance:
“The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”
To properly incorporate limitations:
- Use consistent terminology between the specification and claims
- Ensure that claim terms have clear support or antecedent basis in the specification
- Avoid importing limitations from the specification that are not explicitly stated in the claims
- Consider using a glossary in the specification to define claim terms
By following these guidelines, you can maintain clarity and avoid potential rejections under 35 U.S.C. 112(b) for indefiniteness.
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