How does the USPTO determine if a Markush grouping is improper?

How does the USPTO determine if a Markush grouping is improper?

The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:

1. Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
2. Lack of a common use: The members do not share a common function or purpose.

The MPEP provides specific guidance:

“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”

Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.

To learn more:

• Markush claims
• improper Markush grouping
• USPTO examination
• patent examination