Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, and C” or “wherein the material is A, B, or C”). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (“Supplementary Guidelines”), 76 Fed. Reg. 7162 (February 9, 2011). Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). Although the term “Markush claim” is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and biology are most frequently claimed under the Markush formula, but purely mechanical features or process steps may also be claimed by using the Markush style of claiming. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1297-98, 92 USPQ2d 1163, 1170-1172 (Fed. Cir. 2009)(claim to a hemodialysis apparatus required “at least one unit selected from the group consisting of (i) a dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit” and a user/machine interface operably connected thereto); In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)(defining alternative moieties of a chemical compound with Markush groupings).

Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, and C” or “wherein the material is A, B, or C”). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (“Supplementary Guidelines”), 76 Fed. Reg. 7162 (February 9, 2011). Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). Although the term “Markush claim” is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and biology are most frequently claimed under the Markush formula, but purely mechanical features or process steps may also be claimed by using the Markush style of claiming. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1297-98, 92 USPQ2d 1163, 1170-1172 (Fed. Cir. 2009)(claim to a hemodialysis apparatus required “at least one unit selected from the group consisting of (i) a dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit” and a user/machine interface operably connected thereto); In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)(defining alternative moieties of a chemical compound with Markush groupings).

Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, and C” or “wherein the material is A, B, or C”). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (“Supplementary Guidelines”), 76 Fed. Reg. 7162 (February 9, 2011). Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). Although the term “Markush claim” is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and biology are most frequently claimed under the Markush formula, but purely mechanical features or process steps may also be claimed by using the Markush style of claiming. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1297-98, 92 USPQ2d 1163, 1170-1172 (Fed. Cir. 2009)(claim to a hemodialysis apparatus required “at least one unit selected from the group consisting of (i) a dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit” and a user/machine interface operably connected thereto); In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)(defining alternative moieties of a chemical compound with Markush groupings).

Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, and C” or “wherein the material is A, B, or C”). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (“Supplementary Guidelines”), 76 Fed. Reg. 7162 (February 9, 2011). Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). Although the term “Markush claim” is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and biology are most frequently claimed under the Markush formula, but purely mechanical features or process steps may also be claimed by using the Markush style of claiming. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1297-98, 92 USPQ2d 1163, 1170-1172 (Fed. Cir. 2009)(claim to a hemodialysis apparatus required “at least one unit selected from the group consisting of (i) a dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit” and a user/machine interface operably connected thereto); In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)(defining alternative moieties of a chemical compound with Markush groupings).

Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, and C” or “wherein the material is A, B, or C”). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (“Supplementary Guidelines”), 76 Fed. Reg. 7162 (February 9, 2011). Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). Although the term “Markush claim” is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and biology are most frequently claimed under the Markush formula, but purely mechanical features or process steps may also be claimed by using the Markush style of claiming. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1297-98, 92 USPQ2d 1163, 1170-1172 (Fed. Cir. 2009)(claim to a hemodialysis apparatus required “at least one unit selected from the group consisting of (i) a dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit” and a user/machine interface operably connected thereto); In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)(defining alternative moieties of a chemical compound with Markush groupings).

Thus, a Markush grouping is ordinarily proper if all the members of the group belong to a recognized class (whether physical, chemical, or art recognized) and are disclosed in the specification to possess at least one property in common which is mainly responsible for their function in the claimed invention, and it is clear from their very nature or from the prior art that all members possess this property. See also MPEP § 803.02.

The examiner should include suggestions for the applicant as to how to overcome the rejection, e.g., by suggesting a proper Markush grouping based on the specification as filed and/or by suggesting that applicant set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims. There may be more than one way to formulate a proper Markush grouping. The examiner should not suggest any grouping that clearly would not meet the requirements of 35 U.S.C. 112(a). For example, the examiner should not suggest a grouping that meets the requirements for a proper Markush grouping, but would clearly lack adequate written description if presented in a separate claim.

The examiner should include suggestions for the applicant as to how to overcome the rejection, e.g., by suggesting a proper Markush grouping based on the specification as filed and/or by suggesting that applicant set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims. There may be more than one way to formulate a proper Markush grouping. The examiner should not suggest any grouping that clearly would not meet the requirements of 35 U.S.C. 112(a). For example, the examiner should not suggest a grouping that meets the requirements for a proper Markush grouping, but would clearly lack adequate written description if presented in a separate claim.

The examiner should include suggestions for the applicant as to how to overcome the rejection, e.g., by suggesting a proper Markush grouping based on the specification as filed and/or by suggesting that applicant set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims. There may be more than one way to formulate a proper Markush grouping. The examiner should not suggest any grouping that clearly would not meet the requirements of 35 U.S.C. 112(a). For example, the examiner should not suggest a grouping that meets the requirements for a proper Markush grouping, but would clearly lack adequate written description if presented in a separate claim.

The examiner should include suggestions for the applicant as to how to overcome the rejection, e.g., by suggesting a proper Markush grouping based on the specification as filed and/or by suggesting that applicant set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims. There may be more than one way to formulate a proper Markush grouping. The examiner should not suggest any grouping that clearly would not meet the requirements of 35 U.S.C. 112(a). For example, the examiner should not suggest a grouping that meets the requirements for a proper Markush grouping, but would clearly lack adequate written description if presented in a separate claim.

Background: The Board had entered a rejection – later reversed by the CCPA – of claim 1 under 37 CFR 1.196(b) on the ground that it was drawn to an improper Markush group. The Board had focused on the wide variety of functional groups that could be present in the claimed compounds, and had stressed the different physical and chemical properties of the compounds in view of the functional groups. The Board had observed that “[n]owhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent.” In the Board’s view, “the mere fact” that all of the compounds encompassed by claim 1 shared “a single structural similarity (i.e., the coumarin group),” and as a result were useful either as dyes or intermediates for the preparation of dyes, was insufficient to render the Markush grouping proper because the compounds could “be subject to different modes of application and use.”

Background: The Board had entered a rejection – later reversed by the CCPA – of claim 1 under 37 CFR 1.196(b) on the ground that it was drawn to an improper Markush group. The Board had focused on the wide variety of functional groups that could be present in the claimed compounds, and had stressed the different physical and chemical properties of the compounds in view of the functional groups. The Board had observed that “[n]owhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent.” In the Board’s view, “the mere fact” that all of the compounds encompassed by claim 1 shared “a single structural similarity (i.e., the coumarin group),” and as a result were useful either as dyes or intermediates for the preparation of dyes, was insufficient to render the Markush grouping proper because the compounds could “be subject to different modes of application and use.”

Background: The Board had entered a rejection – later reversed by the CCPA – of claim 1 under 37 CFR 1.196(b) on the ground that it was drawn to an improper Markush group. The Board had focused on the wide variety of functional groups that could be present in the claimed compounds, and had stressed the different physical and chemical properties of the compounds in view of the functional groups. The Board had observed that “[n]owhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent.” In the Board’s view, “the mere fact” that all of the compounds encompassed by claim 1 shared “a single structural similarity (i.e., the coumarin group),” and as a result were useful either as dyes or intermediates for the preparation of dyes, was insufficient to render the Markush grouping proper because the compounds could “be subject to different modes of application and use.”

Background: The Board had entered a rejection – later reversed by the CCPA – of claim 1 under 37 CFR 1.196(b) on the ground that it was drawn to an improper Markush group. The Board had focused on the wide variety of functional groups that could be present in the claimed compounds, and had stressed the different physical and chemical properties of the compounds in view of the functional groups. The Board had observed that “[n]owhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent.” In the Board’s view, “the mere fact” that all of the compounds encompassed by claim 1 shared “a single structural similarity (i.e., the coumarin group),” and as a result were useful either as dyes or intermediates for the preparation of dyes, was insufficient to render the Markush grouping proper because the compounds could “be subject to different modes of application and use.”

Background: The Board had entered a rejection – later reversed by the CCPA – of claim 1 under 37 CFR 1.196(b) on the ground that it was drawn to an improper Markush group. The Board had focused on the wide variety of functional groups that could be present in the claimed compounds, and had stressed the different physical and chemical properties of the compounds in view of the functional groups. The Board had observed that “[n]owhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent.” In the Board’s view, “the mere fact” that all of the compounds encompassed by claim 1 shared “a single structural similarity (i.e., the coumarin group),” and as a result were useful either as dyes or intermediates for the preparation of dyes, was insufficient to render the Markush grouping proper because the compounds could “be subject to different modes of application and use.”

See MPEP § 2111.03 and MPEP § 2173.05(h) for discussions of when a Markush grouping may be indefinite under 35 U.S.C. 112(b) (e.g., if the list of alternatives is not a closed grouping, or if a Markush group is so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention).

In addition to a rejection based on an improper Markush grouping, the claim should also be rejected under 35 U.S.C. 112(b) if one skilled in the art cannot determine the metes and bounds of the Markush claim due to an inability to envision all of the members of the Markush grouping. In other words, if a boundary cannot be drawn separating embodiments encompassed by the claim from those that are not, the claim is indefinite and should be rejected under 35 U.S.C. 112(b). See also MPEP § 2173.05(h).

Note that where a Markush group includes only materials from a recognized scientific class of equivalent materials or from an art-recognized class, “the mere existence of such a group in an application tend[s] to prove the equivalence of its members and when one of them [is] anticipated the group [is] therefore rendered unpatentable, in the absence of some convincing evidence of some degree of non-equivalency of one or more of the remaining members.” In re Ruff, 256 F.2d 590, 598-99, 118 USPQ 340, 348 (CCPA 1958)(“[A]ctual equivalence is not enough to justify refusal of a patent on one member of a group when another member is in the prior art. The equivalence must be disclosed in the prior art or be obvious within the terms of Section 103.” Id. at 599, 118 USPQ at 348).

Note that where a Markush group includes only materials from a recognized scientific class of equivalent materials or from an art-recognized class, “the mere existence of such a group in an application tend[s] to prove the equivalence of its members and when one of them [is] anticipated the group [is] therefore rendered unpatentable, in the absence of some convincing evidence of some degree of non-equivalency of one or more of the remaining members.” In re Ruff, 256 F.2d 590, 598-99, 118 USPQ 340, 348 (CCPA 1958)(“[A]ctual equivalence is not enough to justify refusal of a patent on one member of a group when another member is in the prior art. The equivalence must be disclosed in the prior art or be obvious within the terms of Section 103.” Id. at 599, 118 USPQ at 348).

The claim should be examined for patentability with respect to all other conditions of patentability (e.g., 35 U.S.C. 101, 102, 103, 112, and nonstatutory double patenting). As explained with regard to election of species practice as set forth in detail in MPEP § 803.02, the search need not be extended to species that fall outside a proper Markush grouping.

The claim should be examined for patentability with respect to all other conditions of patentability (e.g., 35 U.S.C. 101, 102, 103, 112, and nonstatutory double patenting). As explained with regard to election of species practice as set forth in detail in MPEP § 803.02, the search need not be extended to species that fall outside a proper Markush grouping.

Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, and C” or “wherein the material is A, B, or C”). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (“Supplementary Guidelines”), 76 Fed. Reg. 7162 (February 9, 2011). Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). Although the term “Markush claim” is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and biology are most frequently claimed under the Markush formula, but purely mechanical features or process steps may also be claimed by using the Markush style of claiming. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1297-98, 92 USPQ2d 1163, 1170-1172 (Fed. Cir. 2009)(claim to a hemodialysis apparatus required “at least one unit selected from the group consisting of (i) a dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit” and a user/machine interface operably connected thereto); In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)(defining alternative moieties of a chemical compound with Markush groupings).

See MPEP § 803.02 for information pertaining to the election, search, and examination of claims that include at least one Markush grouping.

When an examiner determines that the species of a Markush group do not share a single structural similarity or do not share a common use, then a rejection on the basis that the claim contains an ‘‘improper Markush grouping’’ is appropriate (see subsection II). Note that this is a rejection on the merits and may be appealed to the Patent Trial and Appeal Board in accordance with 35 U.S.C. 134 and 37 CFR 41.31(a)(1). Use Form Paragraph 8.40 to reject a claim on the basis that it includes an improper Markush grouping.

In addition to a rejection based on an improper Markush grouping, the claim should also be rejected under 35 U.S.C. 112(b) if one skilled in the art cannot determine the metes and bounds of the Markush claim due to an inability to envision all of the members of the Markush grouping. In other words, if a boundary cannot be drawn separating embodiments encompassed by the claim from those that are not, the claim is indefinite and should be rejected under 35 U.S.C. 112(b). See also MPEP § 2173.05(h).