Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
To learn more:
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more:
MPEP 2117 – Markush Claims (1)
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more:
MPEP 2141.01(A) – Analogous And Nonanalogous Art (1)
The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
To learn more:
Patent Law (3)
The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
To learn more:
How does the USPTO determine if material is ‘new matter’ in a patent application?
The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):
In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.
The process typically involves:
- Reviewing the original specification, claims, and drawings
- Comparing any amendments or new submissions to the original disclosure
- Determining if the new material goes beyond what was explicitly or inherently disclosed
- Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure
If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).
To learn more:
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more:
Patent Procedure (3)
The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
To learn more:
How does the USPTO determine if material is ‘new matter’ in a patent application?
The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):
In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.
The process typically involves:
- Reviewing the original specification, claims, and drawings
- Comparing any amendments or new submissions to the original disclosure
- Determining if the new material goes beyond what was explicitly or inherently disclosed
- Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure
If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).
To learn more:
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
To learn more: