Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
First And Second Paragraphs (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
MPEP 2100 – Patentability (5)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
To learn more:
What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
To learn more:
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
To learn more:
MPEP 2172 – Subject Matter Which The Inventor Or A Joint Inventor Regards As The Invention (1)
What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
To learn more:
MPEP 2173.02 – Determining Whether Claim Language Is Definite (1)
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
To learn more:
MPEP 2174 – Relationship Between The Requirements Of 35 U.S.C. 112(A) And (B) Or Pre – Aia 35 U.S.C. 112 (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112 (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112(B) Or Pre – Aia 35 U.S.C. 112 (2)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
To learn more:
Patent Law (5)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
To learn more:
What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
To learn more:
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
To learn more:
Patent Procedure (5)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
To learn more:
What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
To learn more:
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
To learn more:
Second Paragraph (2)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
To learn more: