Is it acceptable to reference limitations from another claim?
Yes, referencing limitations from another claim is generally acceptable. According to MPEP 2173.05(f): “A claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” This means that…
Read MoreHow does referencing limitations affect product-by-process claims?
Referencing limitations can be particularly relevant for product-by-process claims. The MPEP 2173.05(f) provides an example: “The product produced by the method of claim 1.” This example demonstrates that it’s acceptable to define a product claim by referencing a method claim. Such claims are not automatically considered indefinite under 35 U.S.C. 112(b). However, patent applicants should…
Read MoreWhat should examiners consider when reviewing dependent claims?
When examining dependent claims, patent examiners have specific considerations. The MPEP 2173.05(f) states: “When examining a dependent claim, the examiner should also determine whether the claim complies with 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph.” This means that examiners must ensure that dependent claims properly incorporate all limitations of the claim(s) they…
Read MoreCan method claims reference limitations from apparatus claims?
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference: “A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..” Additionally, the MPEP cites a…
Read MoreWhen can referencing limitations from another claim lead to rejection?
While referencing limitations from another claim is generally acceptable, there are situations where it can lead to rejection. According to MPEP 2173.05(f): “However, where the format of making reference to limitations recited in another claim results in confusion, then a rejection would be proper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”…
Read MoreWhat are some examples of acceptable claim references?
The MPEP 2173.05(f) provides several examples of acceptable claim references: “The product produced by the method of claim 1.” “A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..” Additionally, the MPEP cites a case law example: “See also Ex parte Porter, 25 USPQ2d 1144 (Bd.…
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