MPEP § 904.01 — Analysis of Claims (Annotated Rules)

§904.01 Analysis of Claims

USPTO MPEP version: BlueIron's Update: 2025-12-31
3 Citations

This page consolidates and annotates all enforceable requirements under MPEP § 904.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Analysis of Claims

This section addresses Analysis of Claims. Primary authority: 37 CFR 2116.01. Contains: 1 guidance statement and 2 other statements.

Key Rules

Topic

Statutory Authority for Examination

3 rules
MPEP GuidanceRecommendedAlways
[mpep-904-01-b52a05be68556244d7aa179a]
Claims Must Clearly Define Scope
Note:
Examiners must understand the full scope of claims, including what is not covered as well as what is required.

The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require. During patent examination and reexamination, the claims are given the broadest reasonable interpretation consistent with the specification. See In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) and In re NTP Inc., 654 F3d 1279, 99 USPQ 1481 (Fed. Cir. 2011). See MPEP § 2111 – § 2116.01 for case law pertinent to claim analysis.

Jump to MPEP Source · 37 CFR 2116.01Statutory Authority for ExaminationExamination Procedures
MPEP GuidanceInformativeAlways
[mpep-904-01-6929322d5e339432be336711]
Claims Given Broadest Reasonable Interpretation Consistent with Specification
Note:
During patent examination and reexamination, claims are interpreted in the broadest reasonable way that aligns with the specification.

The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require. During patent examination and reexamination, the claims are given the broadest reasonable interpretation consistent with the specification. See In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) and In re NTP Inc., 654 F3d 1279, 99 USPQ 1481 (Fed. Cir. 2011). See MPEP § 2111 – § 2116.01 for case law pertinent to claim analysis.

Jump to MPEP Source · 37 CFR 2116.01Statutory Authority for ExaminationExamination Procedures
MPEP GuidanceInformativeAlways
[mpep-904-01-186c121ecf119088e9cc394c]
Claims Must Be Given Broadest Reasonable Interpretation Consistent With Specification
Note:
The claims in a patent application should be interpreted as broadly as possible, consistent with the description provided in the specification.

The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require. During patent examination and reexamination, the claims are given the broadest reasonable interpretation consistent with the specification. See In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) and In re NTP Inc., 654 F3d 1279, 99 USPQ 1481 (Fed. Cir. 2011). See MPEP § 2111 – § 2116.01 for case law pertinent to claim analysis.

Jump to MPEP Source · 37 CFR 2116.01Statutory Authority for ExaminationExamination Procedures

Citations

Primary topicCitation
Statutory Authority for Examination37 CFR § 2116.01
Statutory Authority for ExaminationMPEP § 2111
Statutory Authority for ExaminationIn re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997)

Source Text from USPTO’s MPEP

This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.

BlueIron Last Updated: 2025-12-31