What are the key steps in reviewing claims during patent examination?

Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:

1. Identify and evaluate each claim limitation:
   • For processes, identify steps or acts to be performed
   • For products, identify discrete physical structures or materials
2. Correlate claim limitations with the disclosure:
   • Match each claim limitation to portions of the specification that describe it
   • Do this for all claims, including those using means- (or step-) plus-function language
3. Interpret claims using broadest reasonable interpretation:
   • Consider the plain meaning of terms as understood by one having ordinary skill in the art
   • Evaluate any limiting effect of claim language
4. Consider every limitation in the claim:
   • Evaluate the claim as a whole, not as isolated elements

The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.

It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.

To learn more:

• claim analysis
• patent examination
• claim interpretation
• broadest reasonable interpretation