How does the use of new terminology affect the comparison with prior art?
The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a): “Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this…
Read MoreHow does the MPEP address the use of relative terminology in patent claims?
The MPEP addresses the use of relative terminology in patent claims in section 2173.05(b). While this is not directly part of the ‘New Terminology’ section, it’s closely related and important for claim drafting. The key points are: Acceptability of relative terms: The MPEP states, “The use of relative terminology in claim language, including terms of…
Read MoreHow does the MPEP treat terms of degree in patent claims?
The MPEP addresses terms of degree in patent claims in MPEP 2173.05(b). Terms of degree are relative terms that require careful consideration to determine if they are definite. The MPEP states: “Terms of degree are not necessarily indefinite. […] If the specification does not provide some standard for measuring that degree, a determination must be…
Read MoreHow does the MPEP address the use of “substantially” in patent claims?
The MPEP addresses the use of “substantially” in patent claims in MPEP 2173.05(b). The term is often used to mean “the same as if fully met,” as in “substantially horizontal.” The MPEP states: “The term ‘substantially’ is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is…
Read MoreWhat does the MPEP say about subjective terms in patent claims?
The MPEP addresses subjective terms in patent claims in MPEP 2173.05(b). Subjective terms can be problematic because they may not have a well-defined or universally accepted meaning. The MPEP states: “When a subjective term is used in the claim, the examiner should determine whether the specification supplies some standard for measuring the scope of the…
Read MoreWhat does the MPEP say about using the term “about” in patent claims?
The MPEP addresses the use of the term “about” in patent claims in MPEP 2173.05(b). The term is considered a relative term that must be interpreted in the context of the claim and specification. The MPEP states: “The term ‘about’ avoids a strict numerical boundary to the specified parameter. See Ortho-McNeil Pharmaceutical, Inc. v. Caraco…
Read MoreWhat guidance does the MPEP provide on defining new terms in patent applications?
The MPEP provides specific guidance on defining new terms in patent applications in section 2173.05(a). The key points are: Clarity is essential: The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Consistent usage: The specification…
Read MoreWhat are the issues with using phrases like “for example,” “such as,” or “or the like” in patent claims?
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. 1. For the phrase “for example,” form paragraph 7.34.08 states: Regarding claim [1], the phrase…
Read MoreAre functional limitations allowed in patent claims?
Yes, functional limitations are generally allowed in patent claims. The MPEP states, “There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper.” In fact, functional language can be used to limit claims without using the means-plus-function format. However,…
Read MoreWhat is a functional limitation in a patent claim?
A functional limitation in a patent claim is a term that recites a feature “by what it does rather than by what it is”. As stated in the MPEP, “A claim term is functional when it recites a feature ‘by what it does rather than by what it is’ (e.g., as evidenced by its specific…
Read More