What is the MPEP’s stance on using exemplary language in patent claims?
The Manual of Patent Examining Procedure (MPEP) advises against using exemplary language in patent claims. According to MPEP 2173.05(d), “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim.” The…
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 MoreDoes using phrases like “for example” or “such as” automatically make a claim indefinite?
No, the mere use of phrases like “for example” or “such as” does not automatically render a claim indefinite. The MPEP states: “Note that the mere use of the phrase ‘such as’ or ‘for example’ in a claim does not by itself render the claim indefinite.” However, these phrases can potentially lead to confusion about…
Read MoreWhen should an examiner make a rejection under 35 U.S.C. 112(b) for exemplary claim language?
An examiner should consider making a rejection under 35 U.S.C. 112(b) when exemplary claim language creates uncertainty about the claim’s scope. The MPEP 2173.05(d) states: “In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should…
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