Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
First And Second Paragraphs (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
MPEP 2100 – Patentability (5)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
To learn more:
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
To learn more:
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
To learn more:
MPEP 2112 – Requirements Of Rejection Based On Inherency; Burden Of Proof (1)
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
To learn more:
MPEP 2117 – Markush Claims (1)
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
MPEP 2164.07 – Relationship Of Enablement Requirement To Utility Requirement Of 35 U.S.C. 101 (1)
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
To learn more:
MPEP 2173.05(V) – Mere Function Of Machine (1)
The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
To learn more:
MPEP 2174 – Relationship Between The Requirements Of 35 U.S.C. 112(A) And (B) Or Pre – Aia 35 U.S.C. 112 (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
Patent Law (5)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
To learn more:
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
To learn more:
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
To learn more:
Patent Procedure (5)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
To learn more:
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
To learn more:
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
To learn more:
The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
To learn more:
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
To learn more: