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

According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:

“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”

This means that even if the misconduct is related to only one claim, it affects the entire patent.

To learn more:

• fraud
• inequitable conduct
• duty of disclosure
• patent claims
• unenforceability

According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:

“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”

This means that even if the misconduct is related to only one claim, it affects the entire patent.

To learn more:

• fraud
• inequitable conduct
• duty of disclosure
• patent claims
• unenforceability

According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:

“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”

This means that even if the misconduct is related to only one claim, it affects the entire patent.

To learn more:

• fraud
• inequitable conduct
• duty of disclosure
• patent claims
• unenforceability

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 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

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 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

“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

Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:

“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:

• If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
• Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
• However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.

For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.

It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.

To learn more:

• antecedent basis
• claim preamble
• patent claims
• claim drafting
• USPTO guidelines

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:

• 35 U.S.C. 112(b)
• patent claims
• MPEP 2172
• invention subject matter

Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:

“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”

This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.

To learn more:

• chemical compounds
• patent claims
• characteristic-based claims
• unknown structures

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:

• indefiniteness
• reasonable certainty
• patent claims
• 35 U.S.C. 112(b)

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:

• transitional phrases
• patent claims
• claim scope
• claim interpretation

The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):

“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”

This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.

To learn more:

• Enablement standard
• Skilled person
• Inoperative embodiments
• Patent claims

The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

Generally, the preamble limits the claim if:

• It recites essential structure or steps
• It’s necessary to give life, meaning, and vitality to the claim
• It’s used to define the scope of the claimed invention

As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”

To learn more:

• preamble
• claim interpretation
• patent claims
• claim construction

Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “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.”

The significance of transitional phrases includes:

• Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
• Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
• Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.

For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.

Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.

To learn more:

• transitional phrases
• patent claims
• claim construction
• claim scope

What is the difference between a negative limitation and a disclaimer in patent claims?

While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:

Negative Limitations:

• Are part of the original claim language
• Explicitly state what is not included in the claimed invention
• Must have support in the original disclosure
• Example: “A composition free of copper”

Disclaimers:

• Are typically added after the original filing
• Used to overcome prior art rejections or avoid double patenting
• Can sometimes introduce limitations not originally disclosed
• Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”

The MPEP 2173.05(i) focuses primarily on negative limitations, stating:

“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”

This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.

To learn more:

• negative limitations
• disclaimers
• patent claims
• exclusionary proviso

Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“

The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.

To learn more:

• patent claims
• figures
• tables
• incorporation by reference
• claim drafting

Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:

“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”

However, the MPEP also warns:

“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”

Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.

To learn more:

• optionally
• patent claims
• alternative limitations
• claim construction

The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:

“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”

This case established an important principle:

• When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
• This approach ensures that the claims are properly examined for compliance with the written description requirement.
• It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.

The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.

To learn more:

• In re Rasmussen
• new matter
• patent claims
• written description requirement
• 35 U.S.C. 112(a)

The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:

“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”

This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.

To learn more:

• In re Kelly
• double inclusion
• claim construction
• patent claims
• reasonable interpretation

Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:

“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”

Key points to consider:

• Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
• Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
• Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
• “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.

For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”

When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.

To learn more:

• transitional phrases
• patent claims
• specification
• claim interpretation

The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

Generally, the preamble limits the claim if:

• It recites essential structure or steps
• It’s necessary to give life, meaning, and vitality to the claim
• It’s used to define the scope of the claimed invention

As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”

To learn more:

• preamble
• claim interpretation
• patent claims
• claim construction

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

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:

• transitional phrases
• patent claims
• claim scope
• claim interpretation

Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “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.”

The significance of transitional phrases includes:

• Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
• Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
• Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.

For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.

Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.

To learn more:

• transitional phrases
• patent claims
• claim construction
• claim scope

Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:

“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”

Key points to consider:

• Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
• Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
• Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
• “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.

For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”

When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.

To learn more:

• transitional phrases
• patent claims
• specification
• claim interpretation

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 case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:

“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”

This case established an important principle:

• When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
• This approach ensures that the claims are properly examined for compliance with the written description requirement.
• It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.

The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.

To learn more:

• In re Rasmussen
• new matter
• patent claims
• written description requirement
• 35 U.S.C. 112(a)

The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):

“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”

This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.

To learn more:

• Enablement standard
• Skilled person
• Inoperative embodiments
• Patent claims

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:

• 35 U.S.C. 112(b)
• patent claims
• MPEP 2172
• invention subject matter

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:

• indefiniteness
• reasonable certainty
• patent claims
• 35 U.S.C. 112(b)

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

“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

Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:

“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:

• If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
• Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
• However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.

For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.

It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.

To learn more:

• antecedent basis
• claim preamble
• patent claims
• claim drafting
• USPTO guidelines

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

Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:

“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”

However, the MPEP also warns:

“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”

Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.

To learn more:

• optionally
• patent claims
• alternative limitations
• claim construction

What is the difference between a negative limitation and a disclaimer in patent claims?

While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:

Negative Limitations:

• Are part of the original claim language
• Explicitly state what is not included in the claimed invention
• Must have support in the original disclosure
• Example: “A composition free of copper”

Disclaimers:

• Are typically added after the original filing
• Used to overcome prior art rejections or avoid double patenting
• Can sometimes introduce limitations not originally disclosed
• Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”

The MPEP 2173.05(i) focuses primarily on negative limitations, stating:

“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”

This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.

To learn more:

• negative limitations
• disclaimers
• patent claims
• exclusionary proviso

The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:

“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”

This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.

To learn more:

• In re Kelly
• double inclusion
• claim construction
• patent claims
• reasonable interpretation

Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“

The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.

To learn more:

• patent claims
• figures
• tables
• incorporation by reference
• claim drafting

Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:

“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”

This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.

To learn more:

• chemical compounds
• patent claims
• characteristic-based claims
• unknown structures

A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:

• The prior art that adds new teaching to at least one claim
• What that new teaching is
• The claims the new teaching is directed to
• That the new teaching was not previously considered or addressed
• That the new teaching is important in deciding claim allowance

As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”

To learn more:

• ex parte reexamination
• substantial new question of patentability
• SNQ
• prior art
• patent claims

A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:

• The prior art that adds new teaching to at least one claim
• What that new teaching is
• The claims the new teaching is directed to
• That the new teaching was not previously considered or addressed
• That the new teaching is important in deciding claim allowance

As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”

To learn more:

• ex parte reexamination
• substantial new question of patentability
• SNQ
• prior art
• patent claims

After a final decision in an interference proceeding, the claims are handled as follows:

• Claims that were not involved in the interference remain pending in the application.
• Claims that were involved in the interference are disposed of according to the judgment.
• Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.

As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”

To learn more:

• interference proceedings
• final decision
• claim disposal
• patent claims

After a final decision in an interference proceeding, the claims are handled as follows:

• Claims that were not involved in the interference remain pending in the application.
• Claims that were involved in the interference are disposed of according to the judgment.
• Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.

As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”

To learn more:

• interference proceedings
• final decision
• claim disposal
• patent claims

Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”

This information is crucial for several reasons:

• It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
• It helps researchers and competitors understand the current scope of patent protection.
• It provides transparency in the reexamination process and its results.
• It assists in updating patent databases and search systems with the most current information.

By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.

To learn more:

• claim status
• Official Gazette
• reexamination certificate
• patent claims

Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”

This information is crucial for several reasons:

• It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
• It helps researchers and competitors understand the current scope of patent protection.
• It provides transparency in the reexamination process and its results.
• It assists in updating patent databases and search systems with the most current information.

By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.

To learn more:

• claim status
• Official Gazette
• reexamination certificate
• patent claims

According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:

“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”

This means that even if the misconduct is related to only one claim, it affects the entire patent.

To learn more:

• fraud
• inequitable conduct
• duty of disclosure
• patent claims
• unenforceability

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

According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:

“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”

This means that even if the misconduct is related to only one claim, it affects the entire patent.

To learn more:

• fraud
• inequitable conduct
• duty of disclosure
• patent claims
• unenforceability

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

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 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

“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

Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:

“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:

• If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
• Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
• However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.

For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.

It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.

To learn more:

• antecedent basis
• claim preamble
• patent claims
• claim drafting
• USPTO guidelines

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:

• 35 U.S.C. 112(b)
• patent claims
• MPEP 2172
• invention subject matter

Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:

“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”

This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.

To learn more:

• chemical compounds
• patent claims
• characteristic-based claims
• unknown structures

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:

• indefiniteness
• reasonable certainty
• patent claims
• 35 U.S.C. 112(b)

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:

• transitional phrases
• patent claims
• claim scope
• claim interpretation

The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):

“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”

This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.

To learn more:

• Enablement standard
• Skilled person
• Inoperative embodiments
• Patent claims

The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

Generally, the preamble limits the claim if:

• It recites essential structure or steps
• It’s necessary to give life, meaning, and vitality to the claim
• It’s used to define the scope of the claimed invention

As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”

To learn more:

• preamble
• claim interpretation
• patent claims
• claim construction

Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “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.”

The significance of transitional phrases includes:

• Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
• Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
• Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.

For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.

Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.

To learn more:

• transitional phrases
• patent claims
• claim construction
• claim scope

What is the difference between a negative limitation and a disclaimer in patent claims?

While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:

Negative Limitations:

• Are part of the original claim language
• Explicitly state what is not included in the claimed invention
• Must have support in the original disclosure
• Example: “A composition free of copper”

Disclaimers:

• Are typically added after the original filing
• Used to overcome prior art rejections or avoid double patenting
• Can sometimes introduce limitations not originally disclosed
• Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”

The MPEP 2173.05(i) focuses primarily on negative limitations, stating:

“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”

This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.

To learn more:

• negative limitations
• disclaimers
• patent claims
• exclusionary proviso

Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“

The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.

To learn more:

• patent claims
• figures
• tables
• incorporation by reference
• claim drafting

Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:

“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”

However, the MPEP also warns:

“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”

Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.

To learn more:

• optionally
• patent claims
• alternative limitations
• claim construction

The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:

“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”

This case established an important principle:

• When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
• This approach ensures that the claims are properly examined for compliance with the written description requirement.
• It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.

The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.

To learn more:

• In re Rasmussen
• new matter
• patent claims
• written description requirement
• 35 U.S.C. 112(a)

A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:

• The prior art that adds new teaching to at least one claim
• What that new teaching is
• The claims the new teaching is directed to
• That the new teaching was not previously considered or addressed
• That the new teaching is important in deciding claim allowance

As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”

To learn more:

• ex parte reexamination
• substantial new question of patentability
• SNQ
• prior art
• patent claims

After a final decision in an interference proceeding, the claims are handled as follows:

• Claims that were not involved in the interference remain pending in the application.
• Claims that were involved in the interference are disposed of according to the judgment.
• Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.

As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”

To learn more:

• interference proceedings
• final decision
• claim disposal
• patent claims

The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:

“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”

This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.

To learn more:

• In re Kelly
• double inclusion
• claim construction
• patent claims
• reasonable interpretation

Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”

This information is crucial for several reasons:

• It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
• It helps researchers and competitors understand the current scope of patent protection.
• It provides transparency in the reexamination process and its results.
• It assists in updating patent databases and search systems with the most current information.

By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.

To learn more:

• claim status
• Official Gazette
• reexamination certificate
• patent claims

Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:

“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”

Key points to consider:

• Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
• Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
• Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
• “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.

For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”

When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.

To learn more:

• transitional phrases
• patent claims
• specification
• claim interpretation

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

According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:

“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”

This means that even if the misconduct is related to only one claim, it affects the entire patent.

To learn more:

• fraud
• inequitable conduct
• duty of disclosure
• patent claims
• unenforceability

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

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 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

“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

Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:

“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:

• If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
• Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
• However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.

For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.

It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.

To learn more:

• antecedent basis
• claim preamble
• patent claims
• claim drafting
• USPTO guidelines

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:

• 35 U.S.C. 112(b)
• patent claims
• MPEP 2172
• invention subject matter

Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:

“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”

This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.

To learn more:

• chemical compounds
• patent claims
• characteristic-based claims
• unknown structures

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:

• indefiniteness
• reasonable certainty
• patent claims
• 35 U.S.C. 112(b)

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:

• transitional phrases
• patent claims
• claim scope
• claim interpretation

The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):

“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”

This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.

To learn more:

• Enablement standard
• Skilled person
• Inoperative embodiments
• Patent claims

The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”

Generally, the preamble limits the claim if:

• It recites essential structure or steps
• It’s necessary to give life, meaning, and vitality to the claim
• It’s used to define the scope of the claimed invention

As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”

To learn more:

• preamble
• claim interpretation
• patent claims
• claim construction

Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “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.”

The significance of transitional phrases includes:

• Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
• Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
• Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.

For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.

Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.

To learn more:

• transitional phrases
• patent claims
• claim construction
• claim scope

What is the difference between a negative limitation and a disclaimer in patent claims?

While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:

Negative Limitations:

• Are part of the original claim language
• Explicitly state what is not included in the claimed invention
• Must have support in the original disclosure
• Example: “A composition free of copper”

Disclaimers:

• Are typically added after the original filing
• Used to overcome prior art rejections or avoid double patenting
• Can sometimes introduce limitations not originally disclosed
• Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”

The MPEP 2173.05(i) focuses primarily on negative limitations, stating:

“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”

This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.

To learn more:

• negative limitations
• disclaimers
• patent claims
• exclusionary proviso

Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“

The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.

To learn more:

• patent claims
• figures
• tables
• incorporation by reference
• claim drafting

Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:

“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”

However, the MPEP also warns:

“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”

Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.

To learn more:

• optionally
• patent claims
• alternative limitations
• claim construction

The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:

“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”

This case established an important principle:

• When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
• This approach ensures that the claims are properly examined for compliance with the written description requirement.
• It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.

The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.

To learn more:

• In re Rasmussen
• new matter
• patent claims
• written description requirement
• 35 U.S.C. 112(a)

A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:

• The prior art that adds new teaching to at least one claim
• What that new teaching is
• The claims the new teaching is directed to
• That the new teaching was not previously considered or addressed
• That the new teaching is important in deciding claim allowance

As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”

To learn more:

• ex parte reexamination
• substantial new question of patentability
• SNQ
• prior art
• patent claims

After a final decision in an interference proceeding, the claims are handled as follows:

• Claims that were not involved in the interference remain pending in the application.
• Claims that were involved in the interference are disposed of according to the judgment.
• Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.

As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”

To learn more:

• interference proceedings
• final decision
• claim disposal
• patent claims

The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:

“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”

This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.

To learn more:

• In re Kelly
• double inclusion
• claim construction
• patent claims
• reasonable interpretation

Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”

This information is crucial for several reasons:

• It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
• It helps researchers and competitors understand the current scope of patent protection.
• It provides transparency in the reexamination process and its results.
• It assists in updating patent databases and search systems with the most current information.

By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.

To learn more:

• claim status
• Official Gazette
• reexamination certificate
• patent claims

Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:

“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”

Key points to consider:

• Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
• Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
• Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
• “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.

For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”

When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.

To learn more:

• transitional phrases
• patent claims
• specification
• claim interpretation

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