Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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:
MPEP 2173.05(Q) – "Use" Claims (1)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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:
Patent Law (2)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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:
Patent Procedure (2)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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: