What is an “omnibus claim” and how is it addressed in patent examination?
An “omnibus claim” is a type of claim that fails to point out what is included or excluded by the claim language. The MPEP provides a specific form paragraph (7.35) to address omnibus claims in patent examination. According to the MPEP, an example of an omnibus claim is: “A device substantially as shown and described.”…
Read MoreHow does the MPEP address claims that omit essential elements or steps?
The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For omitted steps,…
Read MoreWhy is the Old Combination rejection no longer valid in patent examination?
The Old Combination rejection is no longer valid due to changes in patent law and subsequent court interpretations. The MPEP 2173.05(j) states: “A majority opinion of the Board of Appeals held that Congress removed the underlying rationale of Lincoln Engineering in the 1952 Patent Act, and thereby effectively legislated that decision out of existence. Ex…
Read MoreHow does the invalidation of the Old Combination principle affect patent applicants?
The invalidation of the Old Combination principle generally benefits patent applicants by removing a potential barrier to patentability. According to MPEP 2173.05(j): “Accordingly, a claim should not be rejected on the ground of old combination.” This means that patent applicants can now claim inventions that combine old elements with new or improved elements without fear…
Read MoreWhat is the objective requirement for claims under 35 U.S.C. 112(b)?
The objective requirement for claims under 35 U.S.C. 112(b) focuses on the clarity and definiteness of the claim language. According to MPEP 2171: “The second requirement is an objective one because it is not dependent on the views of the inventor or any particular individual, but is evaluated in the context of whether the claim…
Read MoreAre negative limitations allowed in patent claims?
Yes, negative limitations are allowed in patent claims. The Manual of Patent Examining Procedure (MPEP) 2173.05(i) states: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies…
Read MoreHow does the MPEP address the use of trademarks in patent claims?
The MPEP addresses the use of trademarks in patent claims in MPEP 2173.05(a). According to the manual: “If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA…
Read MoreWhat rejections should be considered for unsupported means-plus-function limitations?
When a means- (or step-) plus-function limitation in a claim is not supported by corresponding structure, material, or acts in the specification, the examiner should consider the following rejections under 35 U.S.C. 112: Enablement (35 U.S.C. 112(a)): If the skilled artisan would not know how to make and use the invention without a description of…
Read MoreWhat is a Markush group in a patent claim?
A Markush group is a way of claiming a list of alternatively useable members in a patent claim. According to MPEP 2173.05(h): “A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.” Markush groups are typically used to…
Read MoreCan a Markush group in a patent claim be indefinite?
Yes, a Markush group in a patent claim can be indefinite under certain circumstances. The MPEP 2173.05(h) states: “In certain circumstances, however, a Markush group may be so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention. For example, if a claim defines a chemical compound using…
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