What are form paragraphs in patent rejections under 35 U.S.C. 112(b)?
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims. According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10,…
Read MoreIs exact wording required for anticipation?
Exact wording, or “ipsissimis verbis,” is not required for anticipation. The MPEP 2131 clarifies: The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. (In re Bond) This means that while the prior art must disclose all elements of the…
Read MoreHow do examiners determine if claim language is indefinite?
How do examiners determine if claim language is indefinite? Examiners assess claim language for indefiniteness based on the guidance provided in MPEP 2173.01. The key principle is stated as follows: “A claim is indefinite when it contains words or phrases whose meaning is unclear.“ To determine if claim language is indefinite, examiners consider: Whether the…
Read MoreCan applicants be their own lexicographers in patent claims?
Yes, applicants can be their own lexicographers in patent claims. According to MPEP 2173.01: “A fundamental principle contained in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is that applicants are their own lexicographers. They can define in the claims what the inventor or a joint inventor regards as the invention essentially in…
Read MoreWhat types of claim language are acceptable in patent applications?
Patent applicants have considerable flexibility in the types of claim language they can use. According to MPEP 2173.01: “Applicant may use functional language, alternative expressions, negative limitations, or any style of expression or format of claim which makes clear the boundaries of the subject matter for which protection is sought.” This means that inventors can…
Read MoreWhat is the purpose of the general review of disclosure in patent examination?
The general review of disclosure is a crucial step in the patent examination process. According to MPEP 1302.01, its purpose is to ensure that: The entire application meets all formal and substantive (statutory) requirements The language of the claims is enabled by and adequately supported in the original application disclosure There is clear support or…
Read MoreWhat should the claim language focus on in a plant patent application?
In a plant patent application, the claim language must be directed to the “new and distinct variety of plant.” The MPEP 1610 states: “This is important as under no circumstance should the claim be directed to a new variety of flower or fruit in contradistinction to the plant bearing the flower or the tree bearing…
Read MoreDo claim terms need to be identical to those in the specification?
No, claim terms do not need to be identical to those in the specification. MPEP 1302.01 clarifies this point: It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. 112(a). The MPEP cites case law to support this, including Eiselstein v.…
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