Patent Law FAQ

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:

“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”

The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:

“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”

Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.

To learn more:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:

“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”

The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:

“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”

Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.

To learn more:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:

“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”

The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:

“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”

Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.

To learn more:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:

“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”

By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.

To learn more:

• optionally
• alternative limitations
• patent claims
• claim drafting

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” (MPEP 2112)

However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”

The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.

To learn more:

• inherency
• burden of proof
• patent rejection
• prima facie case
• objective evidence

Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:

• Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
• Method claims are directed to the process or steps used to make a product or achieve a result.

According to MPEP 2113:

“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”

Key differences include:

1. Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
2. Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
3. Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.

Understanding these differences is crucial for proper claim drafting and patent strategy.

To learn more:

• product-by-process claims
• method claims
• patent applications
• claim types

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:

“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:

“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”

This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.

To learn more:

• apparatus claims
• intended use
• structural limitations
• functional language

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:

• It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
• In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
• In Step 2B, it can contribute to the “significantly more” analysis.
• A particular machine can potentially transform an abstract idea into patent-eligible subject matter.

MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”

The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”

To learn more:

• particular machine
• patent eligibility
• Alice/Mayo test
• abstract idea

The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:

“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”

Key differences:

• “Comprising”: Open-ended, allows for additional, unrecited elements.
• “Consisting of”: Closed, excludes any element not specified in the claim.
• “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.

For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.

When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.

To learn more:

• transitional phrases
• consisting essentially of
• comprising
• consisting of
• patent claims

Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:

“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”

This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:

• The later-filed patent must claim benefit to the provisional application
• At least one claim in the patent must be fully supported by the provisional application’s disclosure
• The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph

If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).

To learn more:

• provisional application
• pre-AIA 35 U.S.C. 102(e)
• prior art
• effective filing date

Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:

“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”

Antecedent basis serves several important functions:

• Ensures clarity and definiteness of claim terms
• Provides a link between the claims and the specification
• Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
• Facilitates proper interpretation of claim scope

To maintain proper antecedent basis:

1. Introduce elements in the claims with “a” or “an”
2. Refer back to previously introduced elements with “the” or “said”
3. Ensure that all claim terms have support in the specification

By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.

To learn more:

• antecedent basis
• claim clarity
• patent drafting
• indefiniteness

Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:

“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”

This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).

To learn more:

• prior art
• inventor’s own work
• statutory bar
• public disclosure

The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:

• Derivation proceeding under 35 U.S.C. 135
• Correction of inventorship under 37 CFR 1.48
• Rejection under 35 U.S.C. 101 and 35 U.S.C. 115

The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“

The appropriate action depends on the specific circumstances of the case and when the error is discovered.

To learn more:

• incorrect inventor
• inventorship correction
• patent application

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:

1. Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
2. Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.

The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“

Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).

To learn more:

• use claims
• US patent applications
• acceptable claims
• process claims
• product-by-process claims

In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:

“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.

Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.

To learn more:

• product-by-process claims
• burden of proof
• patent examination
• prima facie obviousness

What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?

A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:

“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”

To constitute a valid joint research agreement, the following elements must be present:

• Written agreement
• Signed by all parties
• Specification of the subject matter of the invention
• Indication of the field of the invention
• In effect as of the effective filing date of the claimed invention

It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.

To learn more:

• Pre-AIA 35 U.S.C. 103(c)
• joint research agreement
• patent application
• effective filing date

Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:

“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”

This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.

To learn more:

• obvious errors
• patent amendments
• new matter
• MPEP 2163.07

What are the Graham factors in patent obviousness analysis?

The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:

• The scope and content of the prior art
• The differences between the prior art and the claimed invention
• The level of ordinary skill in the pertinent art
• Objective evidence of nonobviousness (secondary considerations)

As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.

To learn more:

• Graham factors
• obviousness analysis
• patent examination
• 35 U.S.C. 103

Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:

MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“

This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.

To learn more:

• interchangeability
• equivalence
• patent examination
• prior art
• person of ordinary skill

“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):

“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”

This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).

To learn more:

• antecedent basis
• claim drafting
• patent claims
• indefiniteness
• clarity

The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:

“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”

This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.

To learn more:

• function-way-result test
• doctrine of equivalents
• patent infringement
• MPEP 2186

What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?

The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):

“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”

Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.

To learn more:

• antecedent basis
• patent claims
• claim language
• articles

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:

• It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
• In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
• In Step 2B, it can contribute to the “significantly more” analysis.
• A particular machine can potentially transform an abstract idea into patent-eligible subject matter.

MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”

The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”

To learn more:

• particular machine
• patent eligibility
• Alice/Mayo test
• abstract idea

The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:

“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”

Key differences:

• “Comprising”: Open-ended, allows for additional, unrecited elements.
• “Consisting of”: Closed, excludes any element not specified in the claim.
• “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.

For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.

When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.

To learn more:

• transitional phrases
• consisting essentially of
• comprising
• consisting of
• patent claims

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” (MPEP 2112)

However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”

The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.

To learn more:

• inherency
• burden of proof
• patent rejection
• prima facie case
• objective evidence

Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:

• Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
• Method claims are directed to the process or steps used to make a product or achieve a result.

According to MPEP 2113:

“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”

Key differences include:

1. Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
2. Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
3. Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.

Understanding these differences is crucial for proper claim drafting and patent strategy.

To learn more:

• product-by-process claims
• method claims
• patent applications
• claim types

In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:

“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.

Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.

To learn more:

• product-by-process claims
• burden of proof
• patent examination
• prima facie obviousness

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:

“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:

“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”

This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.

To learn more:

• apparatus claims
• intended use
• structural limitations
• functional language

Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:

“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”

This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).

To learn more:

• prior art
• inventor’s own work
• statutory bar
• public disclosure

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:

“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”

This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:

• The later-filed patent must claim benefit to the provisional application
• At least one claim in the patent must be fully supported by the provisional application’s disclosure
• The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph

If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).

To learn more:

• provisional application
• pre-AIA 35 U.S.C. 102(e)
• prior art
• effective filing date

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

What are the Graham factors in patent obviousness analysis?

The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:

• The scope and content of the prior art
• The differences between the prior art and the claimed invention
• The level of ordinary skill in the pertinent art
• Objective evidence of nonobviousness (secondary considerations)

As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.

To learn more:

• Graham factors
• obviousness analysis
• patent examination
• 35 U.S.C. 103

A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:

“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”

The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:

“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”

Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.

To learn more:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?

A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:

“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”

To constitute a valid joint research agreement, the following elements must be present:

• Written agreement
• Signed by all parties
• Specification of the subject matter of the invention
• Indication of the field of the invention
• In effect as of the effective filing date of the claimed invention

It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.

To learn more:

• Pre-AIA 35 U.S.C. 103(c)
• joint research agreement
• patent application
• effective filing date

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:

• Derivation proceeding under 35 U.S.C. 135
• Correction of inventorship under 37 CFR 1.48
• Rejection under 35 U.S.C. 101 and 35 U.S.C. 115

The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“

The appropriate action depends on the specific circumstances of the case and when the error is discovered.

To learn more:

• incorrect inventor
• inventorship correction
• patent application

Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:

“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”

This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.

To learn more:

• obvious errors
• patent amendments
• new matter
• MPEP 2163.07

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:

“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”

Antecedent basis serves several important functions:

• Ensures clarity and definiteness of claim terms
• Provides a link between the claims and the specification
• Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
• Facilitates proper interpretation of claim scope

To maintain proper antecedent basis:

1. Introduce elements in the claims with “a” or “an”
2. Refer back to previously introduced elements with “the” or “said”
3. Ensure that all claim terms have support in the specification

By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.

To learn more:

• antecedent basis
• claim clarity
• patent drafting
• indefiniteness

“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):

“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”

This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).

To learn more:

• antecedent basis
• claim drafting
• patent claims
• indefiniteness
• clarity

What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?

The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):

“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”

Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.

To learn more:

• antecedent basis
• patent claims
• claim language
• articles

The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:

“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”

By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.

To learn more:

• optionally
• alternative limitations
• patent claims
• claim drafting

While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:

1. Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
2. Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.

The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“

Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).

To learn more:

• use claims
• US patent applications
• acceptable claims
• process claims
• product-by-process claims

Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:

MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“

This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.

To learn more:

• interchangeability
• equivalence
• patent examination
• prior art
• person of ordinary skill

The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:

“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”

This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.

To learn more:

• function-way-result test
• doctrine of equivalents
• patent infringement
• MPEP 2186

A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:

“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”

The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:

“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”

Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.

To learn more:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:

“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”

By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.

To learn more:

• optionally
• alternative limitations
• patent claims
• claim drafting

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” (MPEP 2112)

However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”

The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.

To learn more:

• inherency
• burden of proof
• patent rejection
• prima facie case
• objective evidence

Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:

• Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
• Method claims are directed to the process or steps used to make a product or achieve a result.

According to MPEP 2113:

“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”

Key differences include:

1. Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
2. Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
3. Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.

Understanding these differences is crucial for proper claim drafting and patent strategy.

To learn more:

• product-by-process claims
• method claims
• patent applications
• claim types

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:

“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:

“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”

This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.

To learn more:

• apparatus claims
• intended use
• structural limitations
• functional language

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:

• It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
• In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
• In Step 2B, it can contribute to the “significantly more” analysis.
• A particular machine can potentially transform an abstract idea into patent-eligible subject matter.

MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”

The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”

To learn more:

• particular machine
• patent eligibility
• Alice/Mayo test
• abstract idea

The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:

“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”

Key differences:

• “Comprising”: Open-ended, allows for additional, unrecited elements.
• “Consisting of”: Closed, excludes any element not specified in the claim.
• “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.

For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.

When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.

To learn more:

• transitional phrases
• consisting essentially of
• comprising
• consisting of
• patent claims

Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:

“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”

This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:

• The later-filed patent must claim benefit to the provisional application
• At least one claim in the patent must be fully supported by the provisional application’s disclosure
• The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph

If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).

To learn more:

• provisional application
• pre-AIA 35 U.S.C. 102(e)
• prior art
• effective filing date

Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:

“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”

Antecedent basis serves several important functions:

• Ensures clarity and definiteness of claim terms
• Provides a link between the claims and the specification
• Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
• Facilitates proper interpretation of claim scope

To maintain proper antecedent basis:

1. Introduce elements in the claims with “a” or “an”
2. Refer back to previously introduced elements with “the” or “said”
3. Ensure that all claim terms have support in the specification

By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.

To learn more:

• antecedent basis
• claim clarity
• patent drafting
• indefiniteness

Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:

“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”

This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).

To learn more:

• prior art
• inventor’s own work
• statutory bar
• public disclosure

The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:

• Derivation proceeding under 35 U.S.C. 135
• Correction of inventorship under 37 CFR 1.48
• Rejection under 35 U.S.C. 101 and 35 U.S.C. 115

The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“

The appropriate action depends on the specific circumstances of the case and when the error is discovered.

To learn more:

• incorrect inventor
• inventorship correction
• patent application

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:

1. Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
2. Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.

The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“

Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).

To learn more:

• use claims
• US patent applications
• acceptable claims
• process claims
• product-by-process claims

In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:

“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.

Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.

To learn more:

• product-by-process claims
• burden of proof
• patent examination
• prima facie obviousness

What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?

A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:

“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”

To constitute a valid joint research agreement, the following elements must be present:

• Written agreement
• Signed by all parties
• Specification of the subject matter of the invention
• Indication of the field of the invention
• In effect as of the effective filing date of the claimed invention

It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.

To learn more:

• Pre-AIA 35 U.S.C. 103(c)
• joint research agreement
• patent application
• effective filing date

Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:

“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”

This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.

To learn more:

• obvious errors
• patent amendments
• new matter
• MPEP 2163.07

What are the Graham factors in patent obviousness analysis?

The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:

• The scope and content of the prior art
• The differences between the prior art and the claimed invention
• The level of ordinary skill in the pertinent art
• Objective evidence of nonobviousness (secondary considerations)

As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.

To learn more:

• Graham factors
• obviousness analysis
• patent examination
• 35 U.S.C. 103

Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:

MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“

This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.

To learn more:

• interchangeability
• equivalence
• patent examination
• prior art
• person of ordinary skill

“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):

“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”

This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).

To learn more:

• antecedent basis
• claim drafting
• patent claims
• indefiniteness
• clarity

The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:

“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”

This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.

To learn more:

• function-way-result test
• doctrine of equivalents
• patent infringement
• MPEP 2186

What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?

The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):

“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”

Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.

To learn more:

• antecedent basis
• patent claims
• claim language
• articles

A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:

“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”

The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:

“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”

Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.

To learn more:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:

“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”

By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.

To learn more:

• optionally
• alternative limitations
• patent claims
• claim drafting

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” (MPEP 2112)

However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”

The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.

To learn more:

• inherency
• burden of proof
• patent rejection
• prima facie case
• objective evidence

Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:

• Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
• Method claims are directed to the process or steps used to make a product or achieve a result.

According to MPEP 2113:

“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”

Key differences include:

1. Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
2. Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
3. Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.

Understanding these differences is crucial for proper claim drafting and patent strategy.

To learn more:

• product-by-process claims
• method claims
• patent applications
• claim types

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:

“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:

“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”

This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.

To learn more:

• apparatus claims
• intended use
• structural limitations
• functional language

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:

• It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
• In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
• In Step 2B, it can contribute to the “significantly more” analysis.
• A particular machine can potentially transform an abstract idea into patent-eligible subject matter.

MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”

The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”

To learn more:

• particular machine
• patent eligibility
• Alice/Mayo test
• abstract idea

The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:

“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”

Key differences:

• “Comprising”: Open-ended, allows for additional, unrecited elements.
• “Consisting of”: Closed, excludes any element not specified in the claim.
• “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.

For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.

When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.

To learn more:

• transitional phrases
• consisting essentially of
• comprising
• consisting of
• patent claims

Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:

“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”

This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:

• The later-filed patent must claim benefit to the provisional application
• At least one claim in the patent must be fully supported by the provisional application’s disclosure
• The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph

If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).

To learn more:

• provisional application
• pre-AIA 35 U.S.C. 102(e)
• prior art
• effective filing date

Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:

“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”

Antecedent basis serves several important functions:

• Ensures clarity and definiteness of claim terms
• Provides a link between the claims and the specification
• Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
• Facilitates proper interpretation of claim scope

To maintain proper antecedent basis:

1. Introduce elements in the claims with “a” or “an”
2. Refer back to previously introduced elements with “the” or “said”
3. Ensure that all claim terms have support in the specification

By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.

To learn more:

• antecedent basis
• claim clarity
• patent drafting
• indefiniteness

Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:

“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”

This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).

To learn more:

• prior art
• inventor’s own work
• statutory bar
• public disclosure

The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:

• Derivation proceeding under 35 U.S.C. 135
• Correction of inventorship under 37 CFR 1.48
• Rejection under 35 U.S.C. 101 and 35 U.S.C. 115

The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“

The appropriate action depends on the specific circumstances of the case and when the error is discovered.

To learn more:

• incorrect inventor
• inventorship correction
• patent application

The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:

“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”

For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.

For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:

• If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
• However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.

Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.

To learn more:

• wherein clause
• whereby clause
• claim interpretation
• claim limitation
• patent claims

While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:

1. Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
2. Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.

The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“

Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).

To learn more:

• use claims
• US patent applications
• acceptable claims
• process claims
• product-by-process claims

In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:

“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.

Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.

To learn more:

• product-by-process claims
• burden of proof
• patent examination
• prima facie obviousness

What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?

A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:

“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”

To constitute a valid joint research agreement, the following elements must be present:

• Written agreement
• Signed by all parties
• Specification of the subject matter of the invention
• Indication of the field of the invention
• In effect as of the effective filing date of the claimed invention

It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.

To learn more:

• Pre-AIA 35 U.S.C. 103(c)
• joint research agreement
• patent application
• effective filing date

Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:

“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”

This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.

To learn more:

• obvious errors
• patent amendments
• new matter
• MPEP 2163.07

What are the Graham factors in patent obviousness analysis?

The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:

• The scope and content of the prior art
• The differences between the prior art and the claimed invention
• The level of ordinary skill in the pertinent art
• Objective evidence of nonobviousness (secondary considerations)

As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.

To learn more:

• Graham factors
• obviousness analysis
• patent examination
• 35 U.S.C. 103

Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:

MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“

This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.

To learn more:

• interchangeability
• equivalence
• patent examination
• prior art
• person of ordinary skill

“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):

“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”

This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).

To learn more:

• antecedent basis
• claim drafting
• patent claims
• indefiniteness
• clarity

The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:

“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”

This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.

To learn more:

• function-way-result test
• doctrine of equivalents
• patent infringement
• MPEP 2186

What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?

The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):

“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”

Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.

To learn more:

• antecedent basis
• patent claims
• claim language
• articles