Question 1

How does anticipation apply to claims covering multiple structures or compositions?

Accepted Answer

When a claim covers multiple structures or compositions, anticipation can occur if any one of those structures or compositions is known in the prior art. The MPEP 2131 cites a Federal Circuit case:

When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art. (Brown v. 3M)

This means that for a claim covering multiple options, finding just one of those options in the prior art can be sufficient for an anticipation rejection.

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Question 2

What is the relationship between generic claims and species restriction in patent applications?

Accepted Answer

The presence of generic claims in a patent application can significantly impact the examiner's ability to require a species restriction. The MPEP provides specific guidance on this relationship:

As stated in MPEP 808.01(a): "In applications where only generic claims are presented, restriction cannot be required unless the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary to search the entire scope of the claim."

This guideline has several important implications:

The presence of a generic claim that encompasses multiple species can prevent a restriction requirement.
Examiners must consider the search burden when deciding whether to restrict in applications with only generic claims.
If a generic claim is found allowable, it can lead to the rejoinder of previously withdrawn species claims.

The MPEP further advises: "In all applications where a generic claim is found allowable, the application should be treated as indicated in MPEP § 809 and § 821.04(a)." This means that allowance of a generic claim can lead to consideration of previously non-elected species.

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Question 3

What is the difference between generic claims and linking claims in patent applications?

Accepted Answer

Generic claims and linking claims serve different purposes in patent applications:

Generic claims cover a broad category or genus of inventions, encompassing multiple species within that genus.
Linking claims connect two or more otherwise independent or distinct inventions.

MPEP 818.02(b) addresses both types of claims:

"Where only generic claims are first presented and prosecuted in an application... [and] Where only linking claims are first presented and prosecuted in an application..."

The examination process differs for each type. For generic claims, the examiner may require election of a species if species claims are later introduced. For linking claims, the examiner may require election of a single invention if claims to multiple linked inventions are later presented.

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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

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How does anticipation apply to claims covering multiple structures or compositions?