What is the difference between preambles in apparatus claims vs. method claims?

The interpretation of preambles can differ between apparatus claims and method claims. The MPEP 2111.02 provides guidance on this distinction: For apparatus claims: Preambles often recite the intended use or purpose of the apparatus Generally, if the body of the claim fully and intrinsically sets forth the complete invention, the preamble is not considered a…

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What are the key considerations for patent drafters regarding double inclusion?

Patent drafters should be aware of the nuances surrounding double inclusion when crafting claims. The MPEP 2173.05(o) provides important guidance: “The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.” Key considerations for patent drafters include: Clarity: Ensure that any instance of double inclusion…

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What are Markush claims of diminishing scope?

Markush claims of diminishing scope refer to a series of claims where each subsequent claim narrows the scope of the Markush group from the previous claim. The MPEP 2173.05(h) addresses this practice: “The use of Markush claims of diminishing scope should not, in itself, be considered a sufficient basis for objection to or rejection of…

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How are statements of intended use in the preamble treated?

Statements of intended use in the preamble are evaluated to determine if they result in a structural or manipulative difference between the claimed invention and the prior art. As stated in MPEP 2111.02: “During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether…

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What is “double inclusion” in patent claims?

“Double inclusion” refers to the inclusion of the same element or component more than once in a patent claim. The Manual of Patent Examining Procedure (MPEP) 2173.05(o) states that there is no per se rule against double inclusion in a claim. As noted in the MPEP: “There is no per se rule that ‘double inclusion’…

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Is double inclusion always improper in patent claims?

No, double inclusion is not always improper in patent claims. The MPEP 2173.05(o) clearly states: “There is no per se rule that ‘double inclusion’ is improper in a claim.” The MPEP further elaborates by citing In re Kelly, which states: “Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations…

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