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How does the USPTO handle antecedent basis issues in Markush groups?

By russ.krajec@blueironip.com | September 29, 2024

The USPTO has specific guidelines for handling antecedent basis issues in Markush groups, which are alternative limitations in patent claims. According to MPEP 2173.05(e): “A Markush group that lists alternative members does not provide antecedent basis for a later claim to one of the members as a individual element. For example, if a claim recites…

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Does lack of antecedent basis always make a claim indefinite?

By russ.krajec@blueironip.com | September 29, 2024

No, lack of antecedent basis does not always render a claim indefinite. According to MPEP 2173.05(e): “Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not…

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Does additional elements in the claim body not mentioned in the preamble cause indefiniteness?

By russ.krajec@blueironip.com | September 29, 2024

No, the presence of additional elements in the body of a claim that are not mentioned in the preamble does not automatically render the claim indefinite. The MPEP 2173.05(e) clarifies: “The mere fact that the body of a claim recites additional elements which do not appear in the claim’s preamble does not render the claim…

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