How does the USPTO determine if a Markush grouping is improper?
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:…
Read MoreWhat is the “single structural similarity” requirement for Markush groups?
What is the “single structural similarity” requirement for Markush groups? The “single structural similarity” requirement for Markush groups refers to a common structure or feature shared by all members of the group. According to MPEP 2117, this requirement is essential for a proper Markush grouping: “Members of a Markush group share a ‘single structural similarity’…
Read MoreWhat makes a Markush grouping proper?
A Markush grouping is considered proper if the members of the group share both: A “single structural similarity” A common use This requirement can be met in two ways: The alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known…
Read MoreWhat is a proper Markush group in patent claims?
What is a proper Markush group in patent claims? A proper Markush group in patent claims is a closed group of alternatives. According to MPEP 2117, “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…
Read MoreHow can an applicant overcome a rejection based on an improper Markush grouping?
How can an applicant overcome a rejection based on an improper Markush grouping? An applicant can overcome a rejection based on an improper Markush grouping in several ways, as outlined in MPEP 2117: Demonstrate a single structural similarity: Show that all members of the Markush group share a common structure or feature that is essential…
Read MoreCan a Markush claim include both compounds and processes?
Can a Markush claim include both compounds and processes? Yes, a Markush claim can include both compounds and processes, as long as they share a common use or property. The MPEP 2117 provides guidance on this: “A Markush claim may encompass a plurality of independent and distinct inventions where two or more members are so…
Read MoreCan a Markush claim be rejected as indefinite?
Yes, a Markush claim can be rejected as indefinite under 35 U.S.C. 112(b) if one skilled in the art cannot determine the metes and bounds of the Markush claim due to an inability to envision all of the members of the Markush grouping. This typically occurs when: The list of alternatives is not a closed…
Read MoreHow are Markush claims examined for patentability?
Markush claims are examined for patentability like other claims, but with some specific considerations: The examiner first determines if the Markush grouping is proper. If improper, a rejection based on an improper Markush grouping is made. The claim is then examined for all other conditions of patentability (e.g., 35 U.S.C. 101, 102, 103, 112, and…
Read MoreHow is an improper Markush grouping rejection addressed?
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…
Read MoreWhat is a Markush claim?
A Markush claim is a type of patent claim that recites a list of alternatively useable members. The key characteristics of a Markush claim are: It lists specified alternatives within a claim The alternatives are selected from a closed group “consisting of” the listed members The members share a “single structural similarity” and a common…
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