It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, examiners should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, examiners and patent reexamination specialists should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

Prior to focusing on specific statutory requirements, examiners must begin examination by determining what, precisely, the inventor or joint inventor has invented and is seeking to patent, and how the claims relate to and define that invention. Examiners will review the complete specification, including the detailed description of the invention, any specific embodiments that have been disclosed, the claims and any specific, substantial, and credible utilities that have been asserted for the invention.

The claimed invention as a whole must be useful. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research (Brenner v. Manson, 383 U.S. 519, 528-36, 148 USPQ 689, 693-96 (1966); In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Ziegler, 992 F.2d 1197, 1200-03, 26 USPQ2d 1600, 1603-06 (Fed. Cir. 1993)).

The claimed invention as a whole must be useful. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research (Brenner v. Manson, 383 U.S. 519, 528-36, 148 USPQ 689, 693-96 (1966); In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Ziegler, 992 F.2d 1197, 1200-03, 26 USPQ2d 1600, 1603-06 (Fed. Cir. 1993)).

Examiners should review the application to identify any asserted utility. The applicant or the inventor is in the best position to explain why an invention is useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant asserts the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Note that the concept of a “practical application” in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a “practical application” in the evaluation of subject matter eligibility. Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant asserts the claimed invention is useful. See MPEP § 2106 for subject matter eligibility guidelines and MPEP § 2107 for utility examination guidelines. The application may describe more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.

The written description will provide the clearest explanation of the invention, by exemplifying the invention, explaining how it relates to the prior art and explaining the relative significance of various features of the invention. Accordingly, examiners should continue their evaluation by:

• (A) determining the function of the invention, that is, what the invention does when used as disclosed (e.g., the functionality of a programmed computer); and
• (B) determining the features necessary to accomplish at least one asserted practical application.

Patent applicants can assist the USPTO by preparing applications that clearly set forth these aspects of an invention.

The claims define the property rights provided by a patent, and thus require careful scrutiny. 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. Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”).

The claims define the property rights provided by a patent, and thus require careful scrutiny. 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. Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”).

The claims define the property rights provided by a patent, and thus require careful scrutiny. 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. Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”).

The claims define the property rights provided by a patent, and thus require careful scrutiny. 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. Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”).

Examiners should begin claim analysis by identifying and evaluating each claim limitation. For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter.

Examiners should begin claim analysis by identifying and evaluating each claim limitation. For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter.

Examiners should begin claim analysis by identifying and evaluating each claim limitation. For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter.

Examiners should begin claim analysis by identifying and evaluating each claim limitation. For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter.

The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:

• (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
• (B) “adapted to” or “adapted for” clauses,
• (C) "wherein" or "whereby" clauses,
• (D) contingent limitations,
• (E) printed matter, or
• (F) terms with associated functional language.

This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). For more information about these types of claim language and how to determine whether they have a limiting effect on claim scope, see MPEP §§ 2111.02 through 2111.05.

This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). For more information about these types of claim language and how to determine whether they have a limiting effect on claim scope, see MPEP §§ 2111.02 through 2111.05.

This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). For more information about these types of claim language and how to determine whether they have a limiting effect on claim scope, see MPEP §§ 2111.02 through 2111.05.

This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). For more information about these types of claim language and how to determine whether they have a limiting effect on claim scope, see MPEP §§ 2111.02 through 2111.05.

Examiners are to give claims their broadest reasonable interpretation in light of the supporting disclosure. See MPEP § 2111. Disclosure may be express, implicit, or inherent. Examiners are to give claimed means- (or step-) plus- function limitations their broadest reasonable interpretation consistent with all corresponding structures (or materials or acts) described in the specification and their equivalents. See In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011). Further guidance in interpreting the scope of equivalents is provided in MPEP §§ 2181 through 2186.

Examiners are to give claims their broadest reasonable interpretation in light of the supporting disclosure. See MPEP § 2111. Disclosure may be express, implicit, or inherent. Examiners are to give claimed means- (or step-) plus- function limitations their broadest reasonable interpretation consistent with all corresponding structures (or materials or acts) described in the specification and their equivalents. See In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011). Further guidance in interpreting the scope of equivalents is provided in MPEP §§ 2181 through 2186.

Examiners are to give claims their broadest reasonable interpretation in light of the supporting disclosure. See MPEP § 2111. Disclosure may be express, implicit, or inherent. Examiners are to give claimed means- (or step-) plus- function limitations their broadest reasonable interpretation consistent with all corresponding structures (or materials or acts) described in the specification and their equivalents. See In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011). Further guidance in interpreting the scope of equivalents is provided in MPEP §§ 2181 through 2186.

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, examiners should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, examiners and patent reexamination specialists should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

Prior to focusing on specific statutory requirements, examiners must begin examination by determining what, precisely, the inventor or joint inventor has invented and is seeking to patent, and how the claims relate to and define that invention. Examiners will review the complete specification, including the detailed description of the invention, any specific embodiments that have been disclosed, the claims and any specific, substantial, and credible utilities that have been asserted for the invention.

Examiners should then correlate each claim limitation to all portions of the disclosure that describe the claim limitation. This is to be done in all cases, regardless of whether the claimed invention is defined using means- (or step-) plus- function language. The correlation step will ensure that examiners correctly interpret each claim limitation in light of the specification.

Examiners are to give claims their broadest reasonable interpretation in light of the supporting disclosure. See MPEP § 2111. Disclosure may be express, implicit, or inherent. Examiners are to give claimed means- (or step-) plus- function limitations their broadest reasonable interpretation consistent with all corresponding structures (or materials or acts) described in the specification and their equivalents. See In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011). Further guidance in interpreting the scope of equivalents is provided in MPEP §§ 2181 through 2186.

Examiners are to give claims their broadest reasonable interpretation in light of the supporting disclosure. See MPEP § 2111. Disclosure may be express, implicit, or inherent. Examiners are to give claimed means- (or step-) plus- function limitations their broadest reasonable interpretation consistent with all corresponding structures (or materials or acts) described in the specification and their equivalents. See In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011). Further guidance in interpreting the scope of equivalents is provided in MPEP §§ 2181 through 2186.

While it is appropriate to use the specification to determine what applicant intends a term to mean, a positive limitation from the specification cannot be read into a claim that does not itself impose that limitation. See MPEP § 2111.01, subsection II. As explained in MPEP § 2111, giving a claim its broadest reasonable interpretation during prosecution will reduce the possibility that the claim, when issued, will be interpreted more broadly than is justified.

Examiners should review the application to identify any asserted utility. The applicant or the inventor is in the best position to explain why an invention is useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant asserts the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Note that the concept of a “practical application” in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a “practical application” in the evaluation of subject matter eligibility. Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant asserts the claimed invention is useful. See MPEP § 2106 for subject matter eligibility guidelines and MPEP § 2107 for utility examination guidelines. The application may describe more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.

Examiners should review the application to identify any asserted utility. The applicant or the inventor is in the best position to explain why an invention is useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant asserts the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Note that the concept of a “practical application” in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a “practical application” in the evaluation of subject matter eligibility. Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant asserts the claimed invention is useful. See MPEP § 2106 for subject matter eligibility guidelines and MPEP § 2107 for utility examination guidelines. The application may describe more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.

Examiners should review the application to identify any asserted utility. The applicant or the inventor is in the best position to explain why an invention is useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant asserts the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Note that the concept of a “practical application” in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a “practical application” in the evaluation of subject matter eligibility. Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant asserts the claimed invention is useful. See MPEP § 2106 for subject matter eligibility guidelines and MPEP § 2107 for utility examination guidelines. The application may describe more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.

Examiners should review the application to identify any asserted utility. The applicant or the inventor is in the best position to explain why an invention is useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant asserts the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Note that the concept of a “practical application” in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a “practical application” in the evaluation of subject matter eligibility. Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant asserts the claimed invention is useful. See MPEP § 2106 for subject matter eligibility guidelines and MPEP § 2107 for utility examination guidelines. The application may describe more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.

Examiners should then correlate each claim limitation to all portions of the disclosure that describe the claim limitation. This is to be done in all cases, regardless of whether the claimed invention is defined using means- (or step-) plus- function language. The correlation step will ensure that examiners correctly interpret each claim limitation in light of the specification.

While it is appropriate to use the specification to determine what applicant intends a term to mean, a positive limitation from the specification cannot be read into a claim that does not itself impose that limitation. See MPEP § 2111.01, subsection II. As explained in MPEP § 2111, giving a claim its broadest reasonable interpretation during prosecution will reduce the possibility that the claim, when issued, will be interpreted more broadly than is justified.

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, examiners should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, examiners and patent reexamination specialists should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, examiners should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, examiners and patent reexamination specialists should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, examiners should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, examiners and patent reexamination specialists should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

Examiners should review the application to identify any asserted utility. The applicant or the inventor is in the best position to explain why an invention is useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant asserts the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Note that the concept of a “practical application” in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a “practical application” in the evaluation of subject matter eligibility. Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant asserts the claimed invention is useful. See MPEP § 2106 for subject matter eligibility guidelines and MPEP § 2107 for utility examination guidelines. The application may describe more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.

Examiners should review the application to identify any asserted utility. The applicant or the inventor is in the best position to explain why an invention is useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant asserts the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Note that the concept of a “practical application” in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a “practical application” in the evaluation of subject matter eligibility. Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant asserts the claimed invention is useful. See MPEP § 2106 for subject matter eligibility guidelines and MPEP § 2107 for utility examination guidelines. The application may describe more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.