Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2000 – Duty Of Disclosure (1)
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
To learn more:
MPEP 2001.06 – Sources Of Information Under 37 Cfr 1.56 (1)
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
To learn more:
MPEP 2100 – Patentability (13)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP ยง 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
To learn more:
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
To learn more:
Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
To learn more:
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
To learn more:
The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
To learn more:
Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
To learn more:
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
To learn more:
MPEP 2103 – Patent Examination Process (1)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
To learn more:
MPEP 2106.04(A) – Abstract Ideas (1)
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
MPEP 2113 – Product – By – Process Claims (1)
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
MPEP 2141 – Examination Guidelines For Determining Obviousness Under 35 U.S.C. 103 (1)
What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
To learn more:
MPEP 2143 – Examples Of Basic Requirements Of A Prima Facie Case Of Obviousness (1)
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
To learn more:
MPEP 2163.04 – Burden On The Examiner With Regard To The Written Description Requirement (2)
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
MPEP 2164.04 – Burden On The Examiner Under The Enablement Requirement (1)
Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
To learn more:
MPEP 2173.03 – Correspondence Between Specification And Claims (1)
If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
To learn more:
MPEP 2173.04 – Breadth Is Not Indefiniteness (1)
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
To learn more:
MPEP 2173.05(A) – New Terminology (1)
The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
To learn more:
MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112 (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP ยง 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112(B) Or Pre – Aia 35 U.S.C. 112 (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP ยง 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
MPEP 2183 – Making A Prima Facie Case Of Equivalence (1)
Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
To learn more:
MPEP 2300 – Interference And Derivation Proceedings (1)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
To learn more:
MPEP 2304 – Suggesting An Interference (1)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
To learn more:
Patent Law (16)
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
To learn more:
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP ยง 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more:
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
To learn more:
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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Patent Procedure (16)
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP ยง 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
To learn more:
Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
To learn more:
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
To learn more:
The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
To learn more:
Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
To learn more:
If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
To learn more:
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
To learn more:
How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
To learn more:
Second Paragraph (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP ยง 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP ยง 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
To learn more: