What are examples of claim language that have been held to be indefinite regarding numerical ranges?
The MPEP provides specific examples of claim language involving numerical ranges that have been held to be indefinite. These examples illustrate potential issues with clarity and definiteness in patent claims. As stated in MPEP 2173.05(c): “Examples of claim language which have been held to be indefinite are: (A) “a temperature of between 45 and 78…
Read MoreCan the scope of patent claims be enlarged during reexamination?
No, the scope of patent claims cannot be enlarged during reexamination. This limitation is explicitly stated in 37 CFR 1.530(j): “No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of…
Read MoreWhat happens if an amendment enlarges the scope of claims in a reexamination?
When an amendment enlarges the scope of claims in a reexamination, it is handled in a specific manner. According to MPEP 2270: “Where an amendment enlarges the scope of the claims of the patent, the amendment will be entered; however the appropriate claims will be rejected under 35 U.S.C. 305.” This means that while the…
Read MoreWhat happens if an amendment enlarges the scope of claims in inter partes reexamination?
In inter partes reexamination, amendments that enlarge the scope of the claims are not permitted and will be rejected. Specifically: If an amendment is found to enlarge the scope of the claims of the patent, those claims will be rejected under 35 U.S.C. 314(a). This rejection is based on the prohibition against broadening the scope…
Read MoreCan the scope of patent claims be enlarged during ex parte reexamination?
The scope of patent claims cannot be enlarged during ex parte reexamination. The MPEP clearly states: “35 U.S.C. 305 states that ‘no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding….’” A claim is considered to enlarge the scope if it is broader…
Read MoreWhat does “enablement commensurate in scope with the claims” mean in patent law?
“Enablement commensurate in scope with the claims” refers to the requirement that the specification of a patent application must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. As stated in the MPEP, The Federal Circuit has repeatedly held that “the specification must…
Read MoreWhat is the difference between claim breadth and indefiniteness?
It’s important to distinguish between claim breadth and indefiniteness in patent examination. The MPEP clarifies this distinction: “Examiners, however, are cautioned against confusing claim breadth with claim indefiniteness. A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined.” Key points to understand: A…
Read MoreCan the transitional phrase “consisting of” ever be interpreted as open-ended in patent claims?
Can the transitional phrase “consisting of” ever be interpreted as open-ended in patent claims? While “consisting of” is generally considered a closed transitional phrase, there are rare circumstances where it might be interpreted as open-ended: Dependent claims: A dependent claim using “consisting of” might be interpreted as open-ended if its base claim uses an open-ended…
Read MoreWhat is the difference between “consisting essentially of” and “comprising” in patent claims?
What is the difference between “consisting essentially of” and “comprising” in patent claims? The transitional phrases “consisting essentially of” and “comprising” have different effects on the scope of patent claims: Comprising: This is an open-ended phrase that allows for additional, unrecited elements or steps. Consisting essentially of: This phrase limits the scope of a claim…
Read MoreHow can a claim be indefinite even if it appears clear on its face?
A claim can be indefinite even if it appears clear on its face when there’s a conflict or inconsistency between the claimed subject matter and the specification disclosure. This inconsistency can render the scope of the claim uncertain. The MPEP 2173.03 states: “A claim, although clear on its face, may also be indefinite when a…
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