How 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…

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What 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…

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What 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…

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What 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…

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Can 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…

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What 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…

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Can 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…

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