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 (3)
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:
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:
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
To learn more:
MPEP 2111.03 – Transitional Phrases (1)
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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 (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:
Patent Law (3)
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:
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:
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
To learn more:
Patent Procedure (3)
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:
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:
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
To learn more:
Second Paragraph (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: