MPEP § 2173.05(d) — Exemplary Claim Language (“for example,” “such as”) (Annotated Rules)
§2173.05(d) Exemplary Claim Language (“for example,” “such as”)
This page consolidates and annotates all enforceable requirements under MPEP § 2173.05(d), 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.
Exemplary Claim Language (“for example,” “such as”)
This section addresses Exemplary Claim Language (“for example,” “such as”). Primary authority: 35 U.S.C. 112(b) and 35 U.S.C. 112. Contains: 3 guidance statements and 1 other statement.
Key Rules
Alternative Limitations (MPEP 2173.05(h))
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth. Note that the mere use of the phrase “such as” or “for example" in a claim does not by itself render the claim indefinite.
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth. Note that the mere use of the phrase “such as” or “for example" in a claim does not by itself render the claim indefinite.
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth. Note that the mere use of the phrase “such as” or “for example" in a claim does not by itself render the claim indefinite.
The above examples of claim language which have been held to be indefinite are fact specific and should not be applied as per se rules. See MPEP § 2173.02 for guidance regarding when it is appropriate to make a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Citations
| Primary topic | Citation |
|---|---|
| Alternative Limitations (MPEP 2173.05(h)) | 35 U.S.C. § 112 |
| Alternative Limitations (MPEP 2173.05(h)) | 35 U.S.C. § 112(b) |
| Alternative Limitations (MPEP 2173.05(h)) | MPEP § 2173.02 |
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.
Official MPEP § 2173.05(d) — Exemplary Claim Language (“for example,” “such as”)
Source: USPTO2173.05(d) Exemplary Claim Language (“for example,” “such as”) [R-07.2015]
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth. Note that the mere use of the phrase “such as” or “for example” in a claim does not by itself render the claim indefinite.
Examples of claim language which have been held to be indefinite because the intended scope of the claim was unclear are:
- (A) “R is halogen, for example, chlorine”;
- (B) “material such as rock wool or asbestos” Ex parteHall, 83 USPQ 38 (Bd. App. 1949);
- (C) “lighter hydrocarbons, such, for example, as the vapors or gas produced” Ex parteHasche, 86 USPQ 481 (Bd. App. 1949);
- (D) “normal operating conditions such as while in the container of a proportioner” Ex parteSteigerwald, 131 USPQ 74 (Bd. App. 1961); and
- (E) “coke, brick, or like material”. Ex parte Caldwell, 1906 C.D. 58 (Comm’r Pat. 1906).
The above examples of claim language which have been held to be indefinite are fact specific and should not be applied as per se rules. See MPEP § 2173.02 for guidance regarding when it is appropriate to make a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.