MPEP § 904.01(a) — Variant Embodiments Within Scope of Claim (Annotated Rules)
§904.01(a) Variant Embodiments Within Scope of Claim
This page consolidates and annotates all enforceable requirements under MPEP § 904.01(a), 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.
Variant Embodiments Within Scope of Claim
This section addresses Variant Embodiments Within Scope of Claim. Contains: 1 requirement.
Key Rules
Anticipation/Novelty
Frequently, a claim includes within its breadth or scope one or more variant embodiments that are not disclosed in the application, but which would anticipate or render obvious the claimed invention if found in a reference. The claim must be so analyzed and any such variant encountered during the search should be recognized.
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 § 904.01(a) — Variant Embodiments Within Scope of Claim
Source: USPTO904.01(a) Variant Embodiments Within Scope of Claim [R-07.2022]
Frequently, a claim includes within its breadth or scope one or more variant embodiments that are not disclosed in the application, but which would anticipate or render obvious the claimed invention if found in a reference. The claim must be so analyzed and any such variant encountered during the search should be recognized.
For any claim capable of such treatment (e.g., a machine or other apparatus), the subject matter as defined by the claim may be sketched or diagrammed in order to clearly delineate the limitations of the claim. Two or more sketches, each of which is as divergent from the disclosure as is permitted by the claim, will assist the examiner in determining the claim’s actual breadth or scope. However, an applicant will not be required to submit such sketches of claim structure. In re Application filed November 16, 1945, 89 USPQ 280, 1951 C.D. 1, 646 O.G. 5 (Comm’r Pat. 1951).