What is the MPEP’s stance on using “optionally” in patent claims?
The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted: “A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative.…
Read MoreHow does the MPEP address negative limitations in patent claims?
The MPEP addresses negative limitations in patent claims in MPEP 2173.05(i), which is closely related to the discussion on alternative limitations in MPEP 2173.05(h). The MPEP states: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation.” This guidance indicates that negative limitations are generally acceptable…
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 MoreWhat is “lack of antecedent basis” in patent claims?
“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e): “The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or…
Read MoreWhat is the difference between inherent and implied antecedent basis in patent claims?
In patent claims, there are two types of acceptable antecedent basis that don’t require explicit introduction: inherent and implied antecedent basis. Inherent antecedent basis occurs when the claim element is necessarily present in the claimed subject matter. For example, “the outer surface” of a sphere doesn’t need explicit introduction because a sphere inherently has an…
Read MoreCan inherent components have antecedent basis without explicit mention?
Yes, inherent components of elements recited in a claim can have antecedent basis without explicit mention. The MPEP 2173.05(e) provides an example: “Inherent components of elements recited have antecedent basis in the recitation of the components themselves. For example, the limitation ‘the outer surface of said sphere’ would not require an antecedent recitation that the…
Read MoreHow can inherent antecedent basis be established in patent claims?
How can inherent antecedent basis be established in patent claims? Inherent antecedent basis can be established in patent claims when the nature of a claimed element is such that it is understood to inherently possess certain components. The MPEP 2173.05(e) provides guidance on this: “Inherent components of elements recited have antecedent basis in the recitation…
Read MoreWhat are some examples of claim language that have been held to be indefinite due to exemplary phrasing?
The MPEP 2173.05(d) provides several examples of claim language that have been held to be indefinite due to exemplary phrasing: “R is halogen, for example, chlorine” “material such as rock wool or asbestos” (Ex parte Hall, 83 USPQ 38 (Bd. App. 1949)) “lighter hydrocarbons, such, for example, as the vapors or gas produced” (Ex parte…
Read MoreCan alternative elements disclosed in the specification be excluded in the claims?
Yes, alternative elements disclosed in the specification can be excluded in the claims through negative limitations. The MPEP 2173.05(i) states: “If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This principle is based on the reasoning that if the specification describes the whole, it necessarily describes the…
Read MoreWhat are the exceptions to the rule against incorporating tables or figures into claims?
While the MPEP generally discourages incorporating tables or figures into claims, there are two main exceptions: Exception 1: When there is no practical way to define the invention in words. Exception 2: Where it is more concise to incorporate tables or figures by reference. The MPEP states: Where there is no practical way to define…
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