Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more:
MPEP 2117 – Markush Claims (2)
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more:
Patent Law (2)
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more:
Patent Procedure (2)
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more: